Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in our jurisdiction is the Industrial Property Code (IPC) approved by Decree-Law No. 110/2018, of 10 December.

The IPC came into force in its entirety on 1 July 2019 (the provisions of the IPC on the protection of trade secrets came into effect on 1 January 2019).

International law

Which international trademark agreements has your jurisdiction signed?

  • the Paris Convention for the Protection of Industrial Property (Paris Convention);
  • The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille Convention);
  • the Convention Establishing the World Intellectual Property Organization (WIPO);
  • the Nice Agreement;
  • the Trademark Law Treaty;
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (Vienna Classification); and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
Regulators

Which government bodies regulate trademark law?

The trademark law is approved by parliament and the body that regulates this law is the Ministry of Justice.

Registration and use

Ownership of marks

Who may apply for registration?

Any individual or legal entity that has a lawful interest; in particular, traders or manufacturers may apply.

Scope of trademark

What may and may not be protected and registered as a trademark?

Registrable signs

A trademark can be composed by a sign or a group of signs capable of being graphically represented; namely, words, including personal names, designs, letters, numbers, sounds, colour, the shape of a product or the packaging thereof, or by a sign or a group of signs that can represent, clearly and precisely, the object of protection granted to its holder,

provided that they are capable to distinguish goods or services of a company from those of another company.

Kinds of trademarks

Trade and service marks, collective marks (a particular sign owned by an association of natural or legal persons) and certification or guarantee marks (a particular sign owned by a natural or legal person who controls goods or services or sets the rules by which those should abide).

Divisional applications and registrations are foreseen in the new IP Code.

Not registrable

Marks likely to cause confusion with others previously registered or involving a ‘risk of association’ therewith; marks consisting exclusively of signs or indications used in commerce for designating kind, quality, quantity, purpose, value, place of origin of the products or time of production, as well as expressions considered of common use except where they have acquired a distinctive character in the commercial practice (secondary meaning); marks in which are included:

  • flags, arms or other emblems of any states, without the consent of the competent authorities;
  • official signs, seals and stamps, without authorisation;
  • coats of arms, decorations and distinctions of honour not belonging to the applicant;
  • medals likely to cause confusion with official decorations;
  • business names, company names, insignia not belonging to the applicant, if not authorised by the owner;
  • names or portraits other than those of the applicant;
  • illicit reproduction of literary or artistic works;
  • expressions or designs contrary to public order or morals; and
  • false indications of source, nature, characteristics and utility of the products.

Under the present IP Code, bad faith becomes a ground for refusal of a trademark registration.

Unregistered trademarks

Can trademark rights be established without registration?

Provisional protection is given to a trademark application. Total protection is given as from the grant of the trademark registration. Thus, the trademark rights are not established without registration.

Only registration confers proprietary rights. The effect of registration therefore is attributive of ownership.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

In relation to the protection of well-known marks, registration is refused for marks that are entirely or partly a reproduction, imitation or translation of a mark well known in Portugal as being the property of a national of any EU country if applied to identical or similar goods or services, and that may lead the consumer into error or confusion, provided the owner of the well-known mark applies for its registration in Portugal.

Regarding protection of a widely known mark, the application for registration of a mark is likewise refused if the mark, although intended for goods or services that are not similar, is graphically or phonetically identical or similar to an earlier mark that enjoys a wide reputation in Portugal or in the European Union and wherever the later mark, without due cause, aims at achieving an unfair advantage over or being detrimental to the distinctive character or the reputation of the earlier mark.

The evidence required includes market studies that reveal the reputation of the mark to the relevant public, costs with marketing companies, sales volume and other factors relevant to the reputation of the mark.

The benefits of registration

What are the benefits of registration?

Only registration confers exclusive rights to a mark. Only registration confers proprietary rights. The effect of registration therefore is attributive of ownership.

Legal action against infringement of a trademark can be brought before the courts and it is thus possible to include claims for damages. The proceedings may be initiated by seizing the infringing goods at customs houses if they are imported. Criminal penalties are set by the court (within the limits fixed in the Industrial Property Code) as well as compensation for damages. An action for infringement may also be initiated by means of a complaint filed with the Economic and Food Safety Authority requesting the preliminary seizure of the infringing goods, subject to the discretion of the public prosecutor who may subsequently bring a criminal action against the infringer.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The requirements and related documents for the filing of a trademark application in Portugal are as follows:

  • the applicant’s full name, nationality, occupation, address or place of business;
  • the list of goods and services;
  • express indication that the trademark is a collective or certification or guarantee trademark;
  • express indication that the trademark is three-dimensional, a sound mark, multimedia, a hologram or of movement, among others;
  • the registration number of any award featured or referred to in the trademark;
  • the colour or colours in which the trademark is to be used, if these are claimed as a distinctive element; and
  • the signature or electronic ID of the applicant or respective representative.

As regards trademarks, the most relevant change with the new IP Code is the abolition of the requirement for the graphic representation of the sign; there is now a requirement for the trademark to be represented in such a way as to enable to determine clearly and precisely the object of protection granted to its holder.

Industrial property attorneys do not need a power of attorney.

Electronic filing is available. Trademark searches are available but not required before filing.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If no opposition is filed against the trademark application and if the application is filed with all the required documents, it usually takes about five months to obtain a trademark registration, and another five months to obtain the registration certificate. The official fees for a trademark application currently amount to €127.37 for first class, and €32.29 for each additional class.

A fee for the granting of any registration has now being established which must be paid within six months following publication of the grant. The related official fees is €10.77.

For the issuance of the related certificate of registration the official fees are €43.05 for the paper version and €16.15 for the digital version.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The applicable classification is the eleventh edition of the International Classification of Goods and Services under the Nice Agreement.

Multi-class applications are available.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

After the time limit for oppositions has elapsed (provided no oppositions have been made), or when the dispute has ended, examination is made as to form, inherent registrability and availability over prior marks.

Applications are examined for potential conflicts with other trademarks.

Letters of consent are accepted to overcome an objection based on a third-party mark.

Applicants can respond to rejections by the trademark office.

When a decision of provisional refusal is delivered by the trademark office, during ex officio examination, on the basis that it may lead to confusion regarding a priority trademark registered for more than five years, the trademark applicant may request that the holder of that trademark registration be notified to provide evidence of use.

If evidence of use is not presented, the priority trademark referred to in the provisional refusal decision shall no longer constitute an obstacle to the granting of registration of that subsequent trademark application.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The use of a trademark or service mark does not have to be claimed before registration is granted or issued.

A registered mark should be used. If the mark is not subject to genuine use during five consecutive years, except for justified reasons, the registration may be declared as forfeited upon request by a third party. The computation of the first non-use period starts with the registration of the mark, which for international marks shall be taken as the date of registration of the same at the International Bureau of the WIPO.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is optional. Possible markings are Marca Registada, MR or ®.

Appealing a denied application

Is there an appeal process if the application is denied?

The interested party that has been the object of an unfavourable decision can try the overcome of such decision through two ways:

  • an ex-officio modification request filed at the trademark office, within two months of publication of a decision, it is decided that it should be altered, the case will be submitted to a higher authority along with all the known facts that justify reversal of the decision made. In case exists an opposite party this one is notified to reply. From the final decision issued by the trademark office, it is possible to appeal in the terms set out below; and
  • appeal to the Intellectual Property Court against the decision of the trademark office, can be filed in a period of two months starting from the date of the decision's publication. Any of the losing parties may appeal against the unfavourable sentence to the court of second instance.
Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Within two months of publication (the term is extendable for one month), any third party considering itself prejudiced by the possible grant of the registration may file an opposition. The applicant may file a counter-statement within two months (term also extendable for one month).

The opposition or the cancellation of a trademark can be requested in the following circumstances:

  • that the person in whose name the registration of a mark was made was not entitled to acquire it;
  • that the registration concerns a mark that was not registrable;
  • that the grant of the registration infringes third-party rights based on priority or other legal title, and, in particular, that the grant infringes upon rights to an earlier mark, provided the use requirement in respect of that mark is complied with. Note, however, that no cancellation on this ground may be requested in the case of acquiescence in the use of the latter mark for five years;
  • that the mark being the subject of the registration wholly or partly is an imitation, translation or reproduction of a mark that is well known in Portugal, and is used for the same or similar articles and there is danger of confusion;
  • that the mark being the subject of the registration is graphically or phonetically identical or similar to an earlier mark being highly renowned in Portugal, irrespective of the goods or services for which it is applied, if use of the later mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark; or
  • that the grant of the registration infringed provisions requiring authorisation or consent and this has not been given.

When a trademark registered for more than five years is alleged to be an obstacle in an opposition procedure, the trademark’s applicant against which the opposition is lodged may require the holder of the opposing trademark to provide evidence of serious use of that trademark in the five years preceding the date of the trademark application whose granting of registration is contested.

Any third party that objects the granting of a trademark registration may now intervene in the registration proceedings submitting observations within two months after the publication of the trademark application, provided that the plea is based on absolute grounds for refusal of the trademark registration.

Bad faith is also a ground for refusal of a trademark registration.

The current official fees at the trademark office associated with a third-party opposition and for a cancellation proceeding, depend on the grounds of cancellation proceedings, are €53.81 each.

In a new process of assessing the validity of certain IP rights, the competence to assess and decide on requests for nullity and annulment of registrations of Trademarks have now been transferred to the Portuguese Intellectual Property Office (INPI) and, therefore, the Intellectual Property Court will no longer have the jurisdiction in what concerns the declaration of invalidity of these registrations, except when the request for declaration of nullity or annulment is filed in counterclaim within the scope of an infringement legal action being assessed by that Court.

The Intellectual Property Court is the competent court of appeal for the final decisions handed down by INPI in this new procedure.

The deadline for requesting the annulment of industrial property rights has been reduced from 10 to 5 years counting from the date of the granting decision of those rights.

The owner of the trademark that is the object of a legal action for annulment or declaration of nullity may require the author of that action to produce evidence of serious use of the priority trademark invoked. The failure to present evidence of serious use will result in the refusal of the annulment or nullity declaration application.

The present official fees at the PTMO associated with a request for nullity and annulment of registrations are €200 each.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The duration of a trademark registration is 10 years from the application date and is indefinitely renewable for further 10-year periods.

Surrender

What is the procedure for surrendering a trademark registration?

The procedure for surrendering a trademark registration is the filing of a formal request at the trademark office with the corresponding power of attorney.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks can be also protected as copyrights or designs in case the corresponding requirements are fulfilled.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Protection can be given to trademarks online or to domain names by the unfair competition rules.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The property of a trademark can be totally or partially licensed, free of charge or in return for payment, in a certain area or throughout the country for the whole of the mark’s duration or for a shorter time. The licence must be recorded in order to have an effect towards third parties.

Licence contracts must be drawn up in writing. Unless otherwise expressly stipulated, for legal purposes a licensee enjoys the faculties belonging to the holder of the right to which the licence applies, with the exception of the provisions of the following paragraphs.

The licence shall be understood to be non-exclusive. An exclusive licence is one in which the holder of the right renounces the faculty to grant other licences for the rights covered by the licence while it remains in effect.

The grant of an exclusive exploitation licence does not prevent the holder from also directly exploiting the right in the licence, unless otherwise stipulated.

Also, unless otherwise stipulated, a right obtained in an exploitation licence cannot be transferred without the written consent of the holder of the right.

If the grant of sub-licences is not provided for in the licence contract, then they may only be granted with the written authorisation of the holder of the right.

Although it is not mandatory, it is usual that control clauses are include in a licence agreement.

Assignment

What can be assigned?

The property of a trademark can be totally or partially assigned. The assignment must be recorded in order to have an effect towards third parties. If recordal of the assignment is requested by the assignor, the assignee should also be a signatory of the assignment document, or issue an express statement that he or she accepts the assignment.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The requirements for registration of an assignment are a deed of assignment in Portuguese signed by the assignor and the assignee and certified by a notary public.

After the filing of the assignment deed, the trademark office analyses the document, notifies the assignee that the assignment has been accepted and proceeds with publishing the act.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

The recordal of the assignment is required in order to be opposable to third parties.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are recognised and must be certified by a notary public. They must be recorded for purposes of their validity in Portugal.

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.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

None.