Patents, trade marks, copyright and designs in Portugal: overview

A guide to intellectual property law in Portugal. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Nuno Cadima Oliveira, F Castelo Branco & Associados
Contents

Patents

1. What are the legal requirements to obtain a patent?

The invention must:

  • Be new.

  • Imply an inventive step.

  • Have an industrial application.

 
2. What categories are excluded from patent protection?

Excluded categories include:

  • Discoveries, as well as scientific theories and mathematical methods.

  • Materials or substances already existing in nature and in pure materials.

  • Aesthetic creations.

  • Projects, principles and schemes of performing mental activities (within games and economic activities), as well as computer programs.

  • Presentations of information.

  • Surgery or therapy treatment methods of the human body or animals, as well as any diagnosis methods, excluding any products, substances or compositions used in these therapies, treatment and diagnosis methods.

In addition, where commercial exploitation is contrary to law, public order, public health or to good social practices. For example:

  • Methods of cloning humans.

  • Methods aimed at modifying the genetic identity of humans.

  • Use of human embryos for industrial or commercial purposes.

  • Methods modifying the genetic identity of animals that may cause them suffering and that do not imply an important medical use for humans or animals, and animals obtained through these methods.

  • Cloning of the human body, as well as the discovery of any of its elements.

  • Plant varieties or animal species, as well as essentially biological methods of obtaining animals or plants.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure? If not, please give brief details of this.

The Institute of Industrial Property (Instituto Nacional da Propriedade Industrial) (see box, The regulatory authority). Its website provides guidance on the application procedure, see www.marcasepatentes.pt.

 
4. On what grounds and when can third parties oppose a patent application?

Any third party can oppose a patent application, within two months after the application is published in the Industrial Property Bulletin, if:

  • The patent application falls in a category excluded from patent protection (see Question 2).

  • Any of the conditions to obtain a patent are not met (see Question 1).

  • The patent is requested in bad faith.

 
5. When does patent protection start and how long does it last?

Patent protection lasts 20 years from the date on which the application is made.

There is some protection for patents in the period between the (mandatory) publication of a registration application in the Industrial Property Bulletin and the granting of the patent.

 
6. On what grounds can a patent infringement action be made?

Criminal proceedings can be started in the following cases of patent infringement:

  • Manufacture of products using a patent, without the owner's consent.

  • Use of methods or means of a patent, without the owner's consent.

  • Import or distribution of products obtained with recourse to the actions set above.

  • Sale, distribution or hiding of counterfeit goods.

  • Obtaining a registration of a patent in bad faith.

In addition, the following unlawful acts may be a quasi-criminal offence, with cases being conducted by the Institute of Industrial Property (which can lead to fines):

  • Conducting preliminary actions aimed at performing the unlawful acts set out above.

  • Claiming ownership of a patent owned by another party.

  • Use or application of references to the patent, without the owner's consent.

 
7. Which courts deal with patent infringement actions?

Civil infringement action are dealt with by the Portuguese Civil Courts (Tribunais de Competência Cível).

Criminal infringement actions are not dealt with by the Portuguese Criminal Courts, with the investigation stage conducted by the Public Prosecutors' Office.

 
8. What are the defences to patent infringement actions?

Defences include:

  • The use is private and non-commercial.

  • The use is experimental.

  • Public use started before the patent priority date.

  • The patent is not infringed.

  • The patent is invalid.

  • The owner's rights have been exhausted.

 
9. What are the remedies in patent infringement actions?

The owner of a patent can claim an indemnity from an infringer.

The owner can also claim the following:

  • Temporary and final injunctions.

  • Prohibition of further exploitation or use.

  • Damages.

  • Account of profits.

  • Confiscation of the infringing goods.

  • Publication of the final decision.

  • Prohibition of activities and temporary or permanent closure of business concerns and participation in fairs.

 

Trade marks

10. What are the legal requirements to obtain a trade mark?

A trade mark can consist of a sign or group of signs capable of being graphically represented (including words, names, sounds, numbers, letters, and the presentation of products or packages), provided they are adequate to distinguish the products or the services of an entity.

A trade mark must:

  • Have a distinctive nature.

  • Not correspond to the name of a person or entity that is not owned by the entity that requests its registration (unless authorisation is obtained), nor to flags or to any state or public symbols or certain categories of signs (namely religious symbols, without permission).

  • Not breach copyright and not offend moral ethics and good social practices, nor breach EU and Portuguese law.

  • Not mislead consumers regarding the nature, qualities, use or origin of the products or services.

  • Be new.

 
11. Is it necessary or advisable to register trade marks? If yes, please state why. If not, please briefly outline the protection given and available for unregistered trade marks.

It is necessary to register a trade mark. Full protection depends on registration with the Institute of Industrial Property.

The owner of an unregistered trade mark that uses it for up to six months is granted, for this period, a registration priority right that can be enforced against third parties.

Owners of well-known trade marks and prestigious trade marks can invoke these rights against registration of similar trade marks (even if the services or products are not identical, nor similar), and only have to present a registration request to intervene in the opposition procedure.

 
12. Which authority registers trade marks? Does its website provide guidance on the application procedure? If not, please give brief details of this.

The Institute of Industrial Property. Its website provides guidance on the application procedure, see www.marcasepatentes.pt.

 
13. On what grounds can the regulatory authority refuse to register a trade mark?

Grounds for refusal include:

  • Lack of payment of applicable fees and presentation of mandatory documents, and disregard of essential formalities.

  • Registration envisages unfair competition actions, or that these actions may be undertaken, irrespective of the applicant's intention.

  • Breach of public policy rules.

  • The mark not having a distinctive character or being composed of signs not capable of being represented.

  • The mark being composed of unlawful signs (see Question 10).

  • The registration request was presented without the owner's consent.

  • The mark is misleading regarding the nature, qualities, use or origin of the products or services.

  • There is a previously registered trade mark, for the same or attached products or services, in a manner that may mislead the consumer or that implies the risk of association between both marks.

 
14. On what grounds and when can third parties oppose a trade mark application?

Any third party can oppose a trade mark application within two months after the application is published in the Industrial Property Bulletin, based on any of the grounds set out in Question 13, and if the registration was applied for in bad faith.

 
15. When does trade mark protection start and how long does it last?

Protection starts from when registration is granted and is valid for ten years (a term that can be renewed for identical periods).

There is some protection for trade marks in the period between the (mandatory) publication of a registration application in the Industrial Property Bulletin and the granting of the trade mark.

There is certain protection for unregistered trade marks and well-known trade marks (see Question 11).

 
16. On what grounds can a trade mark infringement action be made?

Criminal proceedings can be started in the following cases of trade mark infringement:

  • Trade mark counterfeiting, in whole or in part, as well as reproduction of a registered trade mark.

  • Imitation, in whole or in a significant part, of a registered trade mark.

  • Use of registered trade mark counterfeits or imitations.

  • Use of a registered trade mark owned by another entity.

  • Sale, distribution or hiding of counterfeits.

  • Obtaining a registration of a trade mark in bad faith.

  • Registration of a trade mark that corresponds to a reproduction or to an imitation of a trade mark, or of a commercial name owned by an entity residing in a member state of the Paris Convention to cause damage to the entity or to obtain an illegitimate economic advantage.

In addition, the following unlawful acts may be a quasi-criminal offence, with cases being conducted before the Institute of Industrial Property (which can lead to fines):

  • Conducting preliminary actions aimed at performing the unlawful acts set out above.

  • Claiming ownership of a trade mark owned by another party.

  • Use or application of references to the trade mark, without the owner's consent.

 
17. Which courts deal with trade mark infringement actions?
 
18. What are the defences to trade mark infringement actions?

Defences include:

  • The trade mark corresponds to the name and/or address of the user.

  • The use corresponds to indications regarding the kind, quality, quantity, purpose, value, origin, season or manufacturing method of the product or the provision of the service or other characteristics.

  • The trade mark is used for purposes of indicating the purpose of a product or service (namely accessories and spare parts) only.

  • The trade mark has not been seriously used for the past five years.

  • The trade mark is not infringed.

  • The trade mark is invalid.

  • The owner's rights have been exhausted.

 
19. What are the remedies in trade mark infringement actions?

The owner of a trade mark can claim an indemnity from an infringer, for any damages suffered and/or loss of profits.

The owner can also claim the following:

  • Temporary and final injunctions.

  • Prohibition of further exploitation or use.

  • Damages.

  • Account of profits.

  • Confiscation of the infringing goods.

  • Publication of the final decision.

  • Prohibition of activities and temporary or permanent closure of business concerns and participation in fairs.

 

Copyright

20. What are the legal requirements to obtain copyright protection?

Protection does not depend on registration, but only on the exteriorisation of the corresponding work (defined as exteriorised literary, scientific and artistic creations), which must be original.

 
21. Can copyright be registered? If yes, please state which authority registers copyright and the advantages of registering it. Does its website provide guidance on the application procedure? If not, please give brief details of this.

Although registration is not necessary, copyright can be registered with the Inspectorate of Cultural Activities (Inspecção-Geral das Actividades Culturais). Registration more effectively evidences that the work was exteriorised on a certain date. Its website provides guidance on the application procedure, seewww.igac.pt.

 
22. When does copyright protection start and how long does it last?

Protection starts on the exteriorisation of the work and, in general, lasts for 70 years after the intellectual creator dies. The same rule applies to software, but if the copyright is granted to an entity other than the intellectual creator, the term of 70 years starts on the date of disclosure or publication. Other rules concerning the start of protection may apply, according to the type of right and the ownership rules.

 
23. On what grounds can a copyright infringement action be made?

Criminal proceedings can be started in the following cases of copyright infringement:

  • Use of works without the author's consent.

  • Publication or disclosure of works without the author's consent, before disclosure or publication by the author.

  • Gathering or compiling published or non-published works without the author's consent.

  • Non-compliance with limits on authorisation to use a protected work.

  • Counterfeiting of works.

  • Misappropriation of works.

  • Sale, import, export or distribution to the public of a counterfeited or misappropriated work.

 
24. Which courts deal with copyright infringement actions?
 
25. What are the defences to copyright infringement actions?

Defences include:

  • The work does not meet the requirements for copyright protection.

  • The action does not fall in the scope of the exclusive right.

  • Private use or other exceptions from the exclusive right.

  • The allegedly infringing work is an independent work.

  • The copyright holder has given consent to the use.

 
26. What are the remedies in copyright infringement actions?

The owner of a work protected under copyright can claim an indemnity from an infringer, for any damages suffered and/or loss of profits.

The owner can also claim the following:

  • Temporary and final injunctions.

  • Prohibition of further exploitation or use.

  • Damages.

  • Account of profits.

  • Confiscation of the infringing works.

  • Publication of the final decision.

  • Prohibition of activities and temporary or permanent closure of business concerns and participation in fairs.

 

Registered designs

27. What are the legal conditions to obtain a registered design right?

The design must:

  • Be new, that is, it cannot correspond to any design previously disclosed to the public. Protection is also granted to designs that, not being entirely new, are constituted by a combination of existing elements, provided they have singular character.

  • Have singularity, that is, the global impression caused in the mind of an informed user must be different from the global impression caused by any previously divulged design.

  • Be applied to a product, defined as any industrial or craft item, including assembly components, packages, presentation elements, symbols, graphics and typographic letters, but excluding computer programs.

These criteria are only met if the design (after being incorporated in a product) still remains visible during normal use of the product.

 
28. Which authority registers designs? Does its website provide guidance on the application procedure? If not, please give brief details of this.

The Institute of Industrial Property registers designs. Its website provides guidance on the application procedure, see www.marcasepatentes.pt.

 
29. On what grounds and when can third parties oppose a registered design application?

Any third party can oppose a design application within two months after the application is published in the Industrial Property Bulletin, if any of the legal conditions to obtain registration are not met (see Question 27), or if the design is applied for in bad faith.

 
30. When does registered design protection start and how long does it last?

Protection for registered designs lasts five years from the date on which registration is requested, a term that can be renewed for identical periods, up to a total of 25 years.

There is some protection for designs in the period between the (mandatory) publication of a registration application in the Industrial Property Bulletin and the granting of registration.

 
31. On what grounds can a registered design infringement action be made?

Criminal proceedings can be started in the following cases of registered design infringement:

  • Reproduction or imitation, in whole or in part, of the characteristic elements of a registered design, without the owner's consent.

  • Exploitation of a registered design, without the owner's consent.

  • Import or distribution of designs obtained with recourse to the actions set out above.

  • Sale, distribution or hiding of counterfeit goods.

  • Obtaining registration of a design in bad faith.

In addition, the following unlawful acts can be a quasi-criminal offence, with cases being conducted before the Institute of Industrial Property (which can lead to fines):

  • Conducting preliminary actions aimed at performing the unlawful acts set out above.

  • Claiming ownership of a registered design owned by another party.

  • Use or application of references to the registered design, without the owner's consent.

 
32. Which courts deal with registered design infringement actions?
 
33. What are the defences to registered design infringement actions?

Defences include:

  • Counterclaim that the registered design is invalid.

  • The alleged use is not an infringement.

  • Experimental use.

  • Subject to certain conditions, reproduction action, for reference and teaching purposes only.

  • Private use or use within any other exceptions.

  • The use is not in the right-holder's exclusivity.

  • Owner's rights have been exhausted.

 
34. What are the remedies in registered design infringement actions?

The owner of a registered design can claim an indemnity from an infringer, for any damages suffered and/or loss of profits.

The owner can also claim the following:

  • Temporary and final injunctions.

  • Prohibition of further exploitation or use.

  • Damages.

  • Account of profits.

  • Confiscation of the infringing goods.

  • Publication of the final decision.

  • Prohibition of activities and temporary or permanent closure of business concerns and participation in fairs.

 

Unregistered designs

35. What are the legal conditions for unregistered design rights to arise?

Proper and full protection in Portugal for unregistered designs only exists for Community designs, under Regulation (EC) No. 6/2002 on Community designs.

Otherwise, under Portuguese law, protection granted to unregistered (industrial) designs is only temporary. If a design is disclosed within the 12 months before an application to register it by the creator (or by a successor or a third party after the creator provides the information), it can still be registered by the creator. The novelty and singularity characteristics are not affected by this disclosure.

For this protection to arise, the design must comply with the legal conditions to obtain a design right (see Question 27).

 
36. When does unregistered design protection start and how long does it last?
 
37. On what grounds can an unregistered design infringement action be made?

Not applicable.

 
38. What are the defences to unregistered design infringement actions?

Not applicable.

 
39. What are the remedies in unregistered design infringement actions?

Not applicable.

 

Confidential information

40. What are the legal conditions for rights in confidential information to arise?

The Institute of Industrial Property only addresses confidential information in relation to the infringement of industrial property and, more specifically, as a form of unfair competition.

Protection is granted to trade secrets of a competitor that are not generally known, nor easily accessible (in whole and in the connection and configuration of their elements) by people acting in the environment that normally deals with this information. These trade secrets must have a commercial value inherent to their secrecy and must have been the object of relevant actions aimed at ensuring secrecy.

 
41. On what grounds can an action for unauthorised use of confidential information be made?

Grounds include:

  • Unauthorised disclosure.

  • Acquisition or use of trade secrets belonging to another party, provided the trade secrets have the necessary characteristics (see Question 40).

 
42. Which courts deal with actions for unauthorised use of confidential information?

Civil infringement actions are dealt with by the Portuguese Civil Courts.

There are no criminal infringement actions in relation to breach of trade secrets. Breach of them is considered a quasi-criminal infringement (such as unfair competition), and is regulated by the Institute of Industrial Property.

 
43. What are the defences to actions for unauthorised use of confidential information?

Defences include that the information:

  • Is not confidential.

  • Was not communicated confidentially.

 
44. What are the remedies in actions for unauthorised use of confidential information?

The owner of the confidential information can claim an indemnity from an infringer for any damages suffered and/or loss of profits.

The owner can also claim the following:

  • Temporary and final injunctions.

  • Prohibition of further use.

  • Damages.

  • Account of profits.

  • Confiscation of the infringing information.

  • Publication of the final decision.

  • Prohibition of activities and temporary or permanent closure of business concerns and participation in fairs.

 

The regulatory authority

Institute of Industrial Property (Instituto Nacional da Propriedade Industrial)

W www.marcasepatentes.pt

Main areas of responsibility. Registering industrial property rights (and maintaining related files) and issuing decisions and sanctions on unlawful acts.

Guidance on application procedure. Besides giving support for the filling of applications and afterwards, the INPI usually notifies the applicant of any inconsistencies and of any permitted amendments.



Contributor details

Nuno Cadima Oliveira

F Castelo Branco & Associados

T +351 21 358 75 00
F +351 21 358 75 01
E nco@fcblegal.com
W www.fcblegal.com

Qualified. Portugal

Areas of practice. IP; corporate and commercial law

Recent transactions

  • Advising a major national pharmaceutical client on cross border asset purchase operation.
  • Representing a national higher education establishment in several injunction and judicial proceedings regarding IPR infringement, both in Portugal and abroad.
  • Advising a multinational client on software protection from infringement by a third party.

For more details of recent transactions, publications, and so on, see full PLC Which lawyer? profile here.


{ "siteName" : "PLC", "objType" : "PLC_Doc_C", "objID" : "1247334448276", "objName" : "Main IPRs Portugal", "userID" : "2", "objUrl" : "http://us.practicallaw.com/cs/Satellite/us/resource/5-501-5664?null", "pageType" : "Resource", "academicUserID" : "", "contentAccessed" : "true", "analyticsPermCookie" : "2-433e1016:148910507fa:4bd8", "analyticsSessionCookie" : "2-433e1016:148910507fa:4bd9", "statisticSensorPath" : "http://analytics.practicallaw.com/sensor/statistic" }