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PORTUGAL - The new Industrial Property Code enters into force as of July 1

The new Industrial Property Code (“IPC”), approved by Decree-Law No. 110/2018, of 10 December, enters into force as of July 1, with many amendments, some resulting from the implementation of the Directive (EU) 2015/2436 of the European Parliament and of the Council, of 16 December 2015, to approximate the Laws of the Member States relating to trade marks.

Most of these changes represent a real break with the legal framework previously in place.

Some of the main changes are listed below:

INDEX:

I. TRADE MARKS:

1. PTO now competent to decide trade mark cancellation and invalidity actions

2. The time limit for applying for cancellation of trade mark registrations is reduced (from 10) to 5 years

3. Invoking the lack of genuine use can now be:

a. A ground of defence in opposition proceedings

b. Invoked in reply to decisions refusing trade marks on relative grounds

c. A ground of defence in trade mark cancellation or invalidity proceedings

d. A ground of defence in infringement proceedings

4. In the trade mark registration procedure, third parties may now submit observations on absolute grounds for refusal

5. Bad faith is now recognised as a ground for the refusal of trade mark registrations.

6. The scope of the rights conferred by the ownership of trade mark registrations is clarified and extended

7. Trade marks shall be registered for a period of 10 years from the application date

8. The payment of trade mark registration fees is introduced

II. PATENTS:

9. End of the prohibition of double protection of national and European patents

10. Elimination of the possibility of adding technical matter to patent applications

11. Extension of the scope of rights conferred by patents

III. UTILITY MODELS:

12. Removal of the exemption of utility model application examination

13.Extension of limitations to the subject-matter of utility models

I. TRADE MARKS:

1. PTO is now competent to decide trade mark cancellation and invalidity actions

With the new IPC, the Portuguese Patent and Trademark Office (“PTO”) is now competent to hear and decide on cancellation actions and declarations of invalidity of trade mark registrations.

The Intellectual Property Court (“IP Court”) thus ceases to have jurisdiction in terms of the invalidity of trade mark registrations, except where the application for a declaration of invalidity or cancellation is filed as counterclaim in pending proceedings at that Court.

On proceeding pending before the PTO hearings will no longer be held.

The parties may appeal to the IP Court against decisions delivered by the PTO in trade mark cancellation proceedings within two months from the publication of those decisions.

2. The time limit for applying for the cancellation of trade mark registrations is reduced (from 10) to 5 years

The time limit for applying for the cancellation of industrial property rights has been reduced from 10 to 5 years from the granting date of such rights.

3. Invoking the lack of genuine use can now be:

a. A ground of defence in opposition proceedings

When the trade mark invoked in opposition proceedings has been registered for more than 5 years, the applicant of the trade mark against which the opposition is filed may ask the opponent to provide evidence of genuine use of the trade mark on which the opposition is based.

The evidence of use shall relate to the five years preceding the application date of the trade mark under opposition.

Failure to provide such evidence of use shall result in the dismissal of the opposition.

b. Invoked in reply to decisions refusing trade marks on relative grounds

Where a decision of provisional refusal is delivered on the grounds of likelihood of confusion with an earlier trade mark which has been registered for more than 5 years, the applicant of the trade mark may request that the proprietor of said trade mark registration be notified to file evidence of use.

The PTO must then notify the proprietor of the prior trade mark cited in the decision of provisional refusal to submit the evidence of use.

If no evidence of use is submitted, the prior trade mark cited in the decision of provisional refusal shall no longer be an obstacle to the registration of the later trade mark.

c. A ground of defence in trade mark cancellation or invalidity proceedings

The proprietor of the trade mark against which a cancellation action or a declaration of invalidity has been brought may request the party bringing the action to provide evidence of genuine use of the invoked prior trade mark.

Failure to provide evidence of genuine use, or of a due cause for non-use, shall result in the dismissal of the cancellation action or of the application for a declaration of invalidity.

d. A ground of defence in infringement proceedings

Where the trade mark invoked in infringement proceedings has been registered for more than 5 years at the date the infringement proceedings are brought, the defendant may request the proprietor of the prior trade mark to provide evidence of genuine use of that trade mark.

4. In the trade mark registration procedure, third parties may now submit observations on absolute grounds for refusal

Any interested party who wishing to object to the granting of a trade mark registration may now intervene in the registration procedure and submit its observations within 2 months of the publication of the application, provided that the objection is on absolute grounds for refusal of the trade mark registration.

5. Bad faith is now recognised as a ground for the refusal of trade mark registrations.

The new IPC expressly provides bad faith constitutes a ground for the refusal of trade mark registrations.

6. The scope of the rights conferred by the ownership of trade mark registrations is clarified and extended

The new IPC foresees, more accurately, which rights arise from the ownership of trade mark registrations, listing in detail the type of practices by third parties that trade mark proprietors may object to.

It is also expressly stated that the proprietor of a trade mark 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 trade mark rights.

The new IPC also clarifies which practices are likely to constitute the crime of counterfeiting, imitation and unlawful use of trade marks.

7. Trade marks shall be registered for a period of 10 years from the application date

Trade mark registrations shall have a duration of 10 years from the application date and not from the granting date.

8. The payment of trade mark registration fees is introduced

The payment of registration fees is introduced, which must be made within six months of the date of publication of the granting date.

II. PATENTS:

9. End of the prohibition of double protection of national and European patents

It is now be possible for the same entity to hold a national patent and a European patent in force in Portugal for the same invention, which may be beneficial in some circumstances, such as, for instance, if the European unitary patent system and the Unified Patent Court enter into force.

10. Elimination of the possibility of adding technical matter to patent applications

As in most jurisdictions, the possibility of adding technical matters to patent applications has been eliminated.

11. Extension of the scope of rights conferred by patents

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 the invention available to those who do not have the right to exploit the patented invention.

III. UTILITY MODELS:

12. Removal of the exemption of utility model application examination

The assessment of patentability requirements (novelty, inventive step and industrial application) by the PTO is now mandatory.

13. Extension of the limitations to the subject-matter of utility models

In addition to the restrictions already provided for in respect of inventions relating to biological materials or inventions relating to chemical or pharmaceutical substances or processes, it has been added that inventions relating to food products or processes for the manufacture, production or preparation of such products may not be filed as a utility model.


01-07-2019  
 

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