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?

The owner of a trademark can ask for enforcement of the rights of its trademark against an alleged infringer. There are no specialised courts for this matter, and the criminal law of Macao does not establish the trademark enforcement proceedings. However, in this the Civil Procedure Code applies.

Procedural format and timing

What is the format of the infringement proceeding?

Only registration confers exclusive rights to a mark. The following acts done without the consent of the owner of a registered mark are deemed infringements:

  • use in the course of trade in Macao 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 Macao of any sign that, due 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 for 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.

There are severe criminal sanctions, namely, heavy fines and imprisonment for up to three years. Sanctions apply also to deliberately trying to have a mark registered that infringes upon the rights of another party.

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 before the Trademarks Office and the licensee can only intervene if the registered user agreement (licence to use) is recorded before said 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 can be conducted by the Macanese Customs Authorities to halt the import and export of infringing goods.

Only activities that take place in Macanese territory may be taken into account. However, this is not applicable to goods made outside the country from the moment that they are imported into Macao.

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 resist 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?

Unfortunately, there is no typical time frame for infringement or dilution actions. They are lengthy and can last for years.

Limitation period

What is the limitation period for filing an infringement action?

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 against the decision of the IPD of the MES may be lodged with the first instance court within one month of notification. Both the applicant and the opposing party may lodge an appeal. Further appeal lies with the court of second instance.

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 not available in Macao.