Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark owner can ask for enforcement of the rights of its trademark against an alleged infringer. The specialised court for this matter is the Intellectual Property Court. Trademark counterfeiting, imitation and illegal use of a mark can also be considered as unfair competition or criminal offences under Portuguese law. The criminal courts are competent for judging such offences. The judge may base a ruling on the documents and other evidence filed by the parties or may designate oral proceedings for witnesses to be heard. The decision is notified to the parties and the losing party may appeal to the court of second instance.

Criminal proceedings begin with the filing of a complaint by the trademark owner or its recorded licensee.

When the trademark invoked in an infringement action has been registered for more than five years on the date that the infringement action begins, the defendant may request that the holder of the priority trademark produces evidence of serious use of that trademark.

It is now a well-established right of a trademark registration holder to oppose preparatory acts carried out by third parties in the course of commercial operations or against goods in transit, through the filing of a legal action to determine the existence of an infringement of their trademark rights.

Regarding EU trademarks, there is a specific law on enforcement.

Procedural format and timing

What is the format of the infringement proceeding?

Only registration confers exclusive rights to a mark.

The following acts performed without the consent of the owner of a registered mark are deemed infringement:

  • use in the course of trade in Portugal of any sign that is identical or confusingly similar to the registered mark for goods or services being identical or similar to those for which the mark is registered; and
  • use in the course of trade in Portugal of any sign that, owing to the identity or similarity of that sign and the mark or the affinity between the goods or services, creates in the consumer’s mind a risk of confusion, including the risk of association of the sign with the mark.

The exclusive right to a mark does not include the right of the owner to prevent a third party from using, in the course of trade, his or her own name or address, or any indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the services, or any other characteristics of goods or services, or even the mark itself if this is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, provided that in any such case the use is in accordance with honest practices and good customs in industrial and commercial matters.

The format of the proceedings depends on the court and where the case is to be heard.

In civil proceedings with the Intellectual Property Court, the trademark owner files a petition with the indication of the relevant facts and the applicable law. The defendant has the right to file a reply to the petition filed by the trademark owner.

In civil proceedings, written and testimonial evidence can be produced. If the judge decides there are sufficient grounds for the proceedings to proceed, a day will be set aside for a trial where witnesses can be heard. After a decision is given and notified to the parties, the losing party may file an appeal to the Court of Appeal.

In criminal proceedings, the trademark owner files a criminal complaint against the infringer in order to grant the public prosecutor the necessary powers to investigate the case and proceed with the criminal proceedings. The decision by the public prosecutor can be to indict or close the file.

If the file is closed, the trademark owner may file a request for a finding of facts to overrule the decision of the public prosecutor.

In cases of indictment, the infringer may file a request for a finding of facts to overrule the decision of the public prosecutor.

Furthermore, when a request for a finding of facts is filed, a preliminary hearing is scheduled by the criminal court to see whether the decision of the public prosecutor was correct and a decision is given (indictment or closing the file).

If a decision to indict is made, the trial is scheduled by the criminal court. After the notification of the decision to indict, the trademark owner can file a petition for civil compensation for damage.

The trial is heard before a single judge and the public prosecutor in charge of the file. Finally, a decision is given by the criminal court of first instance. It is possible to appeal to the criminal court of second instance and, in some cases, appeal to the Supreme Court.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof lies with the plaintiff, who has the burden of proving that its mark has been infringed.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Both the trademark owner and the licensee may seek remedies. The trademark owner must have the mark registered at the trademark office and the licensee can only intervene if the registered user agreement (licence to use) is recorded at this office.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Border enforcement measures, namely the seizure of counterfeited goods, can be conducted by the customs authorities to halt the import and export of said goods.

Only activities that take place in Portuguese and EU territory may be taken into account.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Adverse or third parties (including state entities) may be required to submit documents or exhibit goods. If they refuse to proceed accordingly, a court order may be sought.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The typical time frame for infringement or dilution actions is around one to two years.

Limitation period

What is the limitation period for filing an infringement action?

In case there is a registration of a trademark that is an infringement of an earlier right, there is a legal term of five years to obtain the cancellation of the infringing registration.

In the absence of a registration, there is no time limit for filing an infringement action, that is, the infringement action can be filed until the infringement is occurring.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

There is no typical range of costs. These depend mainly on the professional fees that are charged.

Appeals

What avenues of appeal are available?

An appeal can be lodged at the Intellectual Property Court against a decision of the trademark office, and an appeal against such decision made at the next instance can be filed at the Court of Appeal.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The defendant or alleged infringer has the legal right to participate in the proceeding by responding to the complaint and submitting evidence.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The IP Code contains provisions regarding the penalties imposed on an infringer, but is silent regarding the apportionment of monetary relief. Injunctive relief is available permanently if there is an immediate danger to the complainant.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are available in Portugal.

In Portugal, Arbitrare was created as an arbitration centre competent to resolve disputes regarding industrial property matters, .pt domain names, trade names and corporate names. This centre resolves disputes between private parties or private parties and Portuguese registration bodies. For the resolution of these disputes, Arbitrare collaborates with renowned arbitrators.

With the new IP Code, all the litigation cases concerning IP rights, including the precautionary procedures, related to reference medicines are presently subject to voluntary arbitration. In the previous Code, these files were conducted through the necessary arbitration.

The benefits of arbitration are:

  • disputes are resolved within a maximum period of six months;
  • arbitrators are experts in the areas of competence of Arbitrare;
  • the arbitral ward has the same value as a state court judgment;
  • confidentiality is guaranteed in all procedural stages;
  • electronic procedure, via a functional and secure online application process; and
  • the proceedings can be carried out in Portuguese or English.

One disadvantage usually associated with arbitral proceedings is that costs are substantially higher than those in judicial proceedings.