Registration of marksi Inherent registrability
National trademark applications may be filed, either through the postal service or online by: (1) the owner of the right, if established or resident in Portugal, or a person who is established or resident in Portugal and is duly empowered for the purpose; (2) the owner of the right, if established or domiciled in a foreign country, provided that the owner can provide either a Portuguese address or email address or fax number; (3) an Official Industrial Property Agent (AOPI); and (4) a duly appointed lawyer or solicitor. All representatives require a power of attorney before filing, except AOPIs, who are accredited by INPI.
The applicant has to provide, inter alia, a graphical representation of the sign or other form of representation that allows determination, in a clear and precise manner, of the scope of the protection granted to its owner and must enumerate the goods and services covered by it, grouped in accordance with the categories in the Nice Classification and defined in clear and precise terms.
The charges for a national trademark application at INPI, for one class of goods or services, are €254.73 for a paper-based application, or €127.37 for an online application. There is an additional cost of €32.29 per class if the applicant chooses to apply for more than one class (€64.57 for a paper-based application). Renewal fees are the same as filing fees.
The renewal of Portuguese trademarks must be requested within the six-month period before the expiry of validity and is subject to the payment of a renewal fee. However, the request for renewal can also be made following expiry of validity, within one year of the publication of the expiry in the IP Bulletin, but three times the amount of due fees must be paid in this case. This must be done without prejudice to the rights of third parties acting in good faith.
According to the IPC, once a trademark is granted, it enjoys a presumption of validity, along with all other industrial property rights.ii Prior rights
The protection of earlier rights is observed by INPI when examining an application.
According to the relevant legal provisions, registration is refused when a trademark consists of a reproduction or imitation of all or part of a trademark previously registered for identical or similar products or services that may mislead or confuse the consumer or present a risk of association with the previously registered trademark (the same applies to logotypes and infringement of other IP rights, mutatis mutandis).
Further grounds of refusal of a trademark are the use of names, portraits or any other expressions without the authorisation of the persons they relate to, or their heirs or relatives or, if authorisation is obtained, if it causes disrespect to those persons; the recognition that the applicant’s intent is one of unfair competition, or that unfair competition is a possible outcome regardless of the applicant’s intention; and the reproduction or imitation of all or part of a denomination of origin or a geographical indication protected under the terms of national or European rules or international agreements that the EU is part of, if the denomination of origin or geographical indication have been applied for before the trademark application.
When cited in opposition proceedings, further grounds of refusal may be the reproduction or imitation of a third party’s company name and other distinctive signs, or merely a characteristic part thereof, if it is likely to mislead or confuse the consumer, and also the infringement of copyrights.iii Inter partes proceedings
When a national trademark application is filed, the fact is published in the national IP Bulletin, a daily publication that contains, inter alia, information about trademark applications (including details about the applicant) and their grant or refusal.
An interested party may submit an opposition or third-party observations to an application within two months (which can be extended for one additional month) of publication of the application in the IP Bulletin. This is subject to the payment of a fee of €53.81 (online) or €107.62 (paper). Applicants have the right to reply to an opposition or third-party observations within two months of their notification, and they may defend by requesting that the claimant in the opposition proceedings provides evidence that the trademark serving as the basis was subject to serious use for five consecutive years prior to the date of the request or the priority claimed, if it has been registered for at least five years. Either ex officio or on request by the interested party and with the acquiescence of the opposing party, the study (assessment) of the application may be suspended for no longer than six months.
After these periods of opposition or observations, and reply, the application is subject to examination, and both parties’ allegations are considered by INPI in reaching its decision, which is usually issued within a period of about four to six months. In contrast to the European Union Intellectual Property Office, INPI examines not only absolute grounds for refusal, but also relative grounds based on ex officio searches for previous potentially conflicting trademarks.
In Portugal, the revocation (either through cancellation on expiry grounds or resulting from invalidity grounds) of a registered trademark shall result from a decision of INPI, except when it results from a counterclaim filed in the context of judicial proceedings (however, when a request for the declaration of nullity or annulment has been filed at INPI prior to the counterclaim, the proceedings are stayed until the decision on the application filed at INPI is definitive or the application has been withdrawn). The referred decisions from INPI may be appealed to the Intellectual Property Court (IP Court). The interested party with legal standing for the declaration of nullity or annulment procedure must be represented by an IP agent, lawyer or solicitor. The request for annulment of trademarks and logotypes’ registrations must be filed within five years of the decision of grant.
When an action of annulment of a trademark is filed, this is recorded by INPI and therefore becomes public knowledge.iv Appeals
The INPI decisions granting or refusing a trademark, or granting or refusing a revocation of a registered trademark, may be appealed before the IP Court within two months of publication of the decision in the IP Bulletin, by the applicant or owner of the registration, those that filed an opposition, those that filed the revocation or anyone directly harmed by the decision. After the appeal is received by the Court, the opposing party, if any, is summoned to respond within 30 days, if the opposing party so wishes. INPI is not a party to these proceedings.
An appeal against a decision by the IP Court (see previous paragraph), or against any IP Court decision in invalidity proceedings, may be appealed before the Court of Appeal, under the general rules of civil procedure. An appeal to the Supreme Court of Justice (third instance) is only possible in special and rare circumstances.