2018/12/27

New Portuguese Industrial Property Code |The most relevant changes in trade mark law

Pedro Rebelo Tavares presents the most relevant changes in trade mark law.

Decree-Law no. 110/2018, which approved the New Portuguese Industrial Property Code, was published in the Portuguese Republic Official Gazette on 10 December 2018, and transposed into domestic law Directive (EU) No. 2015/2436 of the European Parliament and of the Council of 16 December 2015, approximating the laws of the Member States relating to trade marks.

To this extent, of the various changes introduced in this area, the most important ones should be pointed out:

Trade mark representation

Under the new law, it will be no longer necessary for the applicant to submit a graphic representation of the mark along with the application for registration, but only a representation of the mark which allows its protection to be clearly and precisely defined.

This change simplifies the registration process and paves the way for new technologies, facilitating the registration of less conventional trade marks, namely sound, gustative, olfactory and tactile marks.

Thus, by way of example, where the registration of a sound mark is currently required to deliver a visual representation (generally, a musical score sheet), it will be sufficient for the applicant to submit the mark as an audio sample, like the MP3 file format.

Duration of registration

The duration of the registration will continue to be 10 years, but this period will start to count from the date of submission of the request and not from the date of its grant, as it happened until now.

Color trade marks

The limitation of the previous Article 223 of the Portuguese Industrial Property Code, which only allowed to register a color mark when colors were combined with each other, or with graphics, words or other distinctive elements, was removed. To that extent, it will be easier under the new portuguese legislation to register colors associated with certain goods or services as a brand.

Clearer limitations regarding secondary meaning

It is clearer in the new legislation that, in addition to the shape of products, brands may not represent their essential characteristics as well. A color may not be registered as a trade mark for ink, and an aroma may not be registered for a perfume.

Also, trade marks may not consist only of characteristics that are necessary to obtain a technical result, such as blue for cold water and red for hot water, or characteristics that grant some other essential value to the product (eg, the famous red color applied to the sole of a shoe).

These limitations, which were already foreseen in the previous legislation, have now been enlarged and will be less susceptible of discussion.

Serious use of the trade mark

It will be possible for the applicant for a trade mark registration, if his application for registration is subject to an opposition, to require that the opponent proves that the identical or confusable mark on which the opposition was based has been used in connection with the goods or services it was registered for during the last five consecutive years. If the claimant does not provide proof of this serious use, or provide fair grounds for not having used the mark, the opposition will be considered unfounded.

Also, in cases of provisional refusal by the Portuguese Industrial Property Institute on the grounds of the existence of a previously registered trade mark that has been registered for more than five years, the applicant may, in response, request that the holder of the previously registered trade mark be notified to prove, within one month, the use of the same or the fair grounds for non-use, failing which the objections to the application for registration will be deemed remedied and the trade mark will be granted.

To that extent, serious use will become an almost obligatory condition for the holder of a registered trade mark, since the enforcement of the exclusive rights conferred by the registration will require this proof. This reinforcement is intended to ensure that trade marks are actually used and are not registered for purely anti-competitive purposes.

Refusal of registration in bad faith

The new decree provides that bad faith is grounds for refusal of registration and may be claimed by any interested party for that purpose.

This ground for refusal creates an exception to the regime of unregistered trade marks. The new law chooses to retain the previously established rule, which gives the user of a free or unregistered mark a six-month priority right to apply it for registration. With bad faith as grounds for refusal the user of an unregistered trade mark that does not have priority may yet win a conflict against a registered trade mark, provided he can prove the registration was done in bad faith.

The Portuguese Industrial Property Institute has a new jurisdiction

The Portuguese Industrial Property Institute will have jurisdiction to declare, at the first instance, the invalidity of registered trade marks. This jurisdiction, up until now, belonged to the Portuguese Court of Intellectual Property.

Applications for revocation of trade marks will have to be submitted to the Portuguese Institute within a period of five years from the grant of the registration to which they relate.

Collective marks and certification or warranty marks

The association marks and the certification marks will be designated, in the light of the new legislation, collective marks and marks of certification or guarantee, respectively.

Reinforcement in the measures against counterfeiting

Finally, a trade mark owner may prevent third parties from bringing, in the course of commercial operations, goods within the national territory, even if they are not intended for sale on national territory and are only in transit, provided such goods, including their packaging, come from third countries and bear, without authorization, an identical or similar mark to the trade mark registered for those goods.

All these changes, which seek to harmonize Portuguese trade mark legislation with European Union law and case law, will come into effect on the 1st of July, 2019.

Pedro Rebelo Tavares | Trainee Lawyer | pedro.tavares@pra.pt