Registration and useOwnership 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 Industrial Property Code (IPC).
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 EU 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 IPC) 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 IPC 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 fee 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 11th 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 World Intellectual Property Organization.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 Registrada, 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 to overcome the decision through the following two ways.
An ex-officio modification request can be filed at the trademark office, within two months of publication of a decision. If 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. If there is a party opposing the reversal, it will be given the opportunity to reply. From the final decision issued by the trademark office, it is possible to appeal in the terms set out below.
An 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 (it should be noted, 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 to the granting of a trademark registration may intervene in the registration proceedings, submitting observations within two months of 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 of the trademark office for a third-party opposition and for a cancellation proceeding, depending 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 five 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 patent and trademarks office 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 or 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.
Law stated dateCorrect on
Give the date on which the information above is accurate.
15 September 2020.