Industrial Property Code - Trademarks
The Portuguese Government's revision of the Industrial Property Laws, and most significantly the amendment to the Industrial Property Code (CPI), aims to enhance the use of industrial property in Portugal, improving the conditions for companies to successfully differentiate their products and services in the Portuguese and European markets.
The following changes regarding trademarks are of note:
• Trademarks do not need to be graphically represented.
It is now possible to register trademarks not graphically represented provided that the representation is clear and precise.
• Trademarks can be registered in a single colour.
• The term of validity of the trademark registration is now counted from the application date rather than the registration date.
• Introduction of more rules for collective marks and certification marks.
The amendment sets out more exhaustive rules on registering and protecting collective marks and certification marks, which are now also expressly designated as a mark of guarantee.
The list of grounds for refusing registration and for invalidation of these marks has been extended, as have the reasons for expiry.
• Clarification of the rules applicable to genuine use of a trademark in opposition proceedings, in proceedings for provisional refusal of a registration, in revocation proceedings and in lawsuits addressed to prevent abusive use.
Similarly to the European Union trademark rules, the new Portuguese IP law in the case of opposition proceedings, in proceedings for provisional refusal of a registration, in revocation proceedings and in lawsuits addressed to prevent abusive use, grants the right to the applicant to request the demonstration of genuine use of the prior trademark claimed as ground for refusal.
• The right to amend the trademark application is limited.
The new CPI lays down that, after publication, the new trademark application may only be amended in situations intended to limit the list of products or services or to correct errors of form.
• New grounds for refusing registration of a trademark application are introduced.
New grounds for refusing registration of a trademark are introduced, in particular the prohibition on inclusion in the new trademark of traditional terms for wines, traditional specialities guaranteed and the names of plant varieties. The law also expressly provides for refusal of a registration applied for in bad faith.
• Exhaustive rules on the rights granted by trademark registrations.
Situations in which the trademark proprietor can prevent the use of a sign by a third part are set out exhaustively, with the legislator also choosing to indicate, by way of example, the acts that can be prevented by the trademark proprietor.
A new provision is also introduced relating to preparatory acts.
It is now also expressly established that the trademark holder is entitled to require the publisher of a work including a reproduction of its trademark to accompany that trademark with a reference that it is a registered trademark, whenever the way it is published gives the impression that it is the generic name of the products or services mentioned or publicised in the work.
• The trademark proprietor is now prohibited to prevent the use of a trademark subsequently registered in the case the later trademark can no longer be declared null or void.
• Unfair competition ceases to be a ground for revocation of a trademark registration, although it continues to be a ground for refusing registration.
• The transfer of the entirety of a company implies the transfer of the trademark associated with it.
• As for licenses the new law expressly establishes that the trademark licencee can only act judicially with the permission of the trademark licensor or, in the case of an exclusive licence, if the licensor does not initiate such proceedings having been notified for that purpose by the licensee.
• The term of expiry of international trademark registration begins on the date on which the trademark ceases to be vulnerable to refusal or opposition.
Regarding the expiry period for international trademarks, the new Portuguese IP law sets out that this period begin on the date in which the trademark ceases to be vulnerable to refusal or opposition and that, in such cases, the period is calculated as from the date on which the trademark ceases to be vulnerable to refusal or opposition.