Civil litigationi Forums
Trademark enforcement disputes are typically resolved before the IP Court, a court established in 2012, now with three judges. It hears cases relating to copyright, industrial property, domain names, trade names, company names and unfair competition. Although it should be considered a specialised court, not all the judges are specialised in IP.
The decisions of the IP Court can be appealed to the Lisbon Court of Appeal (second instance court) and, in some cases, to the Supreme Court of Justice (final instance court).
Besides judicial courts, the parties can agree to submit a dispute to an arbitral tribunal. In Portugal, the institutionalised arbitration centre ARBITRARE, created in 2009, has jurisdiction to resolve disputes arising from industrial property rights, .pt domain names, trade names and corporate names.ii Pre-action conduct
There are no mandatory pretrial formalities that need to be undertaken (such as warning letters). Although they have no procedural effects, it is customary to send out cease-and-desist letters before filing a civil action.
The parties can also agree to submit the dispute to mediation prior to the judicial dispute, although this is not common practice.iii Causes of actionTrademark infringement
Any proprietor can react against the use (wholly or in part) of his or her registered trademark or a similar trademark by a third party, when: (1) the proprietor has an earlier registered trademark; (2) both trademarks are used for identical or similar products or services; and (3) the trademarks are graphically, figuratively, phonetically or in any other way so similar that the consumer can be easily misled or confused, or if it entails a risk of the later trademark being associated with the earlier registered trademark, in such a way that the consumer can only distinguish them after careful examination or comparison.
The IPC distinguishes between well-known and famous (‘prestigious’ in Portuguese law) trademarks, which are both specially protected. According to Portuguese case law and doctrine, only a significant difference between contested trademarks could preclude an imitation judgment for well-known trademarks. For famous or prestigious trademarks, the goods and services covered by the trademark do not have to be similar or identical for infringement to be recognised.Company names
Civil actions concerning company names must be filed with the IP Court. In these cases, company names can, as distinctive signs, be protected against other similar company names or even other trademarks.Unfair competition
Unfair competition can also be grounds for a civil claim (alone or together with trademark infringement). Any act that contravenes business rules and honest commercial practices should be considered an act of unfair competition.iv Conduct of proceedingsPreliminary injunctions
The IPC allows for preliminary injunctions (PI) to be granted on the basis of the threat or actual infringement of any industrial property rights. If actual infringement is already being committed, the applicant only has to demonstrate the ownership of a right and that it is being infringed (irreparable harm only needs to be proven if the PI is requested on the basis of the threat of infringement).
If the PI turns out to be unjustified, the applicant may be liable for damages.Ordinary proceedings
Civil main action follows the general regime provided for in the Portuguese Civil Procedural Code (CPC). It includes three written pleadings: the initial claim or claims, the defence and, whenever a counterclaim is formulated by the defendant in the defence, a reply.
However, the courts have, under the general adversarial principle, been accepting a reply by the claimant to the objections raised by the defendant in its defence. This reply may be admitted in writing, to be submitted within 10 days (which corresponds to the general deadline prescribed in the CPC), or orally during the preliminary hearing or prior to the final hearing. The same rule will apply if the claimant raises an objection to the counterclaim formulated by the defendant in its reply, whereby the court may admit the submission by the defendant of its counter-reply to the reply filed by the claimant, on the same terms as those outlined above.
The parties must indicate, in the initial claim and in the defence, the types of evidence intended to be used during the proceedings (the ‘evidentiary application’). Despite this apparently tight timeline for submission of types of evidence, it is possible to modify or include new witnesses until the 20th day prior to the final hearing date (with the counterparty allowed to do the same) and, should the court decide to schedule a preliminary hearing, it is also possible to modify the entire evidentiary application during this preliminary hearing. The CPC foresees the following types of evidence: the testimony (by means of the declaration by the parties or witnesses in the presence of the court), documentary evidence, technical expertise and judicial inspection.
This phase may last up to four months, should all the pleadings identified above be presented. The defendant is usually served with the claim within one or two weeks of the submission of the initial claim; the deadline to file a defence can vary between 30, 35, 45 and 60 days (depending on whether the defendant’s address is in the same district as the court or, ultimately, outside Portugal); the claimant will have a 30-day deadline to reply to the counterclaim, or a 10-day deadline to submit an application regarding the objections raised in the defence (subject to the procedural constraints identified above).
The hearing phase may be divided into two different periods: the preliminary hearing and the final hearing.
The preliminary hearing, which is not mandatory and, in some cases, may even be omitted, mainly serves the purpose of conciliating the parties or preparing for the hearing.
During the final hearing, which is practically impossible to postpone and is always recorded, the court, presided over by a single judge, hears the testimonies of both the parties and the witnesses, and the legal counsels during their final oral arguments. The decision should then be rendered within 30 days of the conclusion of the hearing.
Depending on the length and the technical complexity of the pleadings, on the amount of evidence submitted and, finally, on the amount of cases pending before the IP Court at that time, the hearing phase may last up to seven months.
The decision of the IP Court may, in principle, be subject to appeal before the Lisbon Court of Appeal, which as a rule will have no suspensive effect. The appellant has to file the appeal within 30 days of the notification of the decision (or 40 if the record of the hearing and testimonies contained therein are reappraised) and the respondent is granted another 30 or 40-day period to submit its counter-appeal arguments, with the option to extend the subject of the appeal. The respondent may also decide to submit a cross-appeal if one or more of the claims filed was rejected (at least in part), which must be filed within the 30-day period for the presentation of counter-appeal arguments. The Lisbon Court of Appeal, composed of a panel of three judges, has some powers to modify the decision on the facts.
The Lisbon Court of Appeal is currently delivering decisions in around six months.
An appeal to the Supreme Court of Justice is possible, although the requirements are stricter and the subject of the appeal is limited to legal matters and interpretation.
The court fees may vary depending on the value fixed to the claim and the complexity of the matter (the degree of complexity is assessed by the court at the end of the proceedings), but they can amount to around €50,000.v Remedies
The remedies set out in the IPC are mostly in line with Directive 2004/48/EC on the enforcement of intellectual property rights. Accordingly, as well as injunctions (preliminary or otherwise, and those associated with a penalty payment in cases of non-compliance) and orders for compensation for damage and loss, the court may order three further types of measure, subject to a standard of necessity and proportionality: (1) recall, (2) removal from the channels of commerce, or (3) destruction of the goods that infringe the industrial property rights. When applying these remedies, the judge has to consider the interests of the parties involved, the interests of third parties and, in particular, those of consumers.
The Court’s decision may also include inhibitory measures, notably a temporary prohibition to perform certain professional activities, or to participate in fairs or markets, and a temporary or definitive closure of the business.
Other enforcement proceedingsi Criminal proceedings and misdemeanours
Some specific criminal procedures and misdemeanours are also set out in the IPC.
The following types of conduct are considered a criminal offence:
- using counterfeit or imitated trademarks in products or packages;
- using, counterfeiting or imitating well-known trademarks for which registration has already been applied for in Portugal;
- using (even if in products or services without identity or affinity), trademarks that are a translation of, or are identical or similar to, existing trademarks for which registration has been applied for and that enjoy prestige in Portugal or the EU, if they are EU trademarks, if the use of the later trademarks seeks to unjustly obtain undue benefit from the distinctive or prestigious character of the earlier trademarks or may be detrimental to them; and
- using a registered trademark belonging to another person in products, services or an establishment or company.
These crimes are punishable with imprisonment for up to three years or a fine of between €50 and €180,000.
Criminal procedure demands that the injured party lodge a complaint (within six months of the date the crime was committed). The right to lodge a criminal complaint ceases if a civil claim based on the same facts as the prospective criminal complaint has been brought previously.
Criminal procedures for infringement of industrial property rights are not common (the most common being in relation to counterfeiting).
Regarding misdemeanours, fines of between €3,000 and €30,000 (for legal persons) and between €750 and €7,500 (for natural persons) are applicable in cases of use of prohibited trademarks, as well as misuse of names, insignias or logotypes, and preparatory acts regarding the criminal offences set out in the IPC.ii Customs procedures
Customs procedures follow Regulation (EU) No. 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights.
The Portuguese customs authority tends to be quite efficient in relation to trademarks and designs.