The new Industrial Property Code (IPC), approved by Decree-Law 110/2018, entered into force on 1 July 2019 with a number of amendments resulting from the implementation of the EU Trademark Regulation (2015/2424/EU) to approximate the trademark laws of EU member states. Most of these changes represent a real break with the previous legal framework. Some of the main changes are listed below.
PTO competent to decide trademark cancellation and invalidity actions
With the new IPC, the Patent and Trademark Office (PTO) is now competent to hear and decide on cancellation actions and declarations of invalidity of trademark registrations.
The IP Court thus ceases to have jurisdiction regarding the invalidity of trademark registrations, except where the application for a declaration of invalidity or cancellation is filed as a counterclaim in pending proceedings at that court.
Hearings will no longer be held in proceedings pending before the PTO.
The parties may appeal to the IP Court against decisions delivered by the PTO in trademark cancellation proceedings within two months from the publication of those decisions.
Time limit to apply for cancellation of trademark registrations reduced
The time limit to apply for the cancellation of industrial property rights has been reduced from 10 to five years from the granting date of such rights.
Invoking absence of genuine use
Ground of defence in opposition proceedings
When a trademark invoked in opposition proceedings has been registered for more than five years, the applicant against which the opposition is filed may ask the opponent to provide evidence of genuine use of the trademark on which the opposition is based.
The evidence of use will relate to the five years preceding the application date of the trademark under opposition. Failure to provide such evidence of use will result in dismissal of the opposition.
Decisions refusing trademarks on relative grounds
Where a decision of provisional refusal is delivered on the grounds of likelihood of confusion with an earlier trademark which has been registered for more than five years, the applicant may request that the proprietor of said registration be notified to file evidence of use.
The PTO must then notify the proprietor of the prior trademark cited in the decision of provisional refusal to submit the evidence of use.
If no evidence of use is submitted, the prior trademark cited in the decision of provisional refusal will no longer be an obstacle to the registration of the later mark.
Ground of defence in trademark cancellation or invalidity proceedings
The proprietor of a trademark against which a cancellation action or declaration of invalidity has been brought may request that the party bringing the action provide evidence of genuine use of the invoked prior mark.
Failure to provide evidence of genuine use, or of a due cause for non-use, will result in the dismissal of the cancellation action or application for a declaration of invalidity.
Ground of defence in infringement proceedings
Where a trademark invoked in infringement proceedings has been registered for more than five years at the date on which the infringement proceedings are brought, the defendant may request the proprietor of the prior mark to provide evidence of genuine use of that mark.
Third parties may now submit observations on absolute grounds for refusal
Any parties that want to object to the granting of a trademark registration may now intervene in the registration procedure and submit their observations within two months of the publication of the application, provided that the objection is on absolute grounds for refusal of the trademark registration.
Bad faith recognised as ground for refusal of trademark registration
The new IPC expressly provides that bad faith constitutes as a ground for the refusal of trademark registrations.
Scope of rights conferred by trademark registration ownership clarified and extended
The new IPC foresees more accurately which rights arise from the ownership of trademark registrations, listing in detail the type of third-party practices that trademark proprietors may object to.
It is also expressly stated that the proprietor of a trademark registration may object to preparatory acts carried out by third parties in the course of commercial transactions, or against goods in transit, by bringing an action to determine the existence of an infringement of their trademark rights.
The new IPC also clarifies which practices are likely to constitute the crime of counterfeiting, imitation and the unlawful use of trademarks.
Trademarks become registered for 10 years from application date
Trademark registrations become registered for 10 years from the application date and no longer from the granting date.
Trademark registration fees introduced
Trademark registration fees have been introduced, which must be made within six months from the granting date's publication.
Prohibition on double protection of national and European patents rescinded
It is now possible for the same entity to hold a national and a European patent in force in Portugal for the same invention, which may be beneficial in some circumstances (eg, if the European unitary patent system and the Unified Patent Court enter into force).
Possibility to add technical matter to patent applications eliminated
As in most jurisdictions, the possibility of adding technical matters to patent applications has been eliminated.
Scope of rights conferred by patents extended
In addition to the direct infringement of patents, the indirect infringement of patents is now also provided for in the IPC, which means that patent holders have the right to prevent third parties from making the means for the execution of an invention available to those without the right to exploit it.
Exemption of utility model application examination removed
The assessment of patentability requirements (ie, novelty, inventive step and industrial application) by the PTO is now mandatory.
Limitations to the subject matter of utility models extended
In addition to the restrictions already provided for in respect of inventions relating to biological materials or chemical or pharmaceutical substances or processes, inventions relating to food products or processes for the manufacture, production or preparation of such products may not be filed as utility models.
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