This country-specific Q&A provides an overview to intellectual property law in Portugal.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist in this jurisdiction to protect?
(a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);
R: In what refers to inventions, the Portuguese jurisdiction, namely the Portuguese Industrial Property Code, grants protection to: i) patents; ii) supplementary protection certificates; iii) utility models;
Know-how is also protected via unfair competition prohibition and it does not need any registration to be effective.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
R: As regards Brands, the Portuguese Industrial Property Code, grants protection to: i) trademarks; ii) logos; iii) designations of origin; iv) geographical indications v) company/commercial names.
As a member-state of the UE, the UE trademarks are also protected in Portugal.
It is also possible to designate Portugal as regards the International Trademark Registration system (Madrid Agreement).
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).
R: Portuguese jurisdiction also protects i) topographies of semiconductor products ii) new plant varieties iii) design rights.
Portuguese jurisdiction also protects copyright (authorial right). Database may be protected via copyright. Copyright protection does not need registration, but it is possible (and recommended).
As a member-state of the UE, the UE designs are also protected in Portugal.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: 20 years calculated from the application date (in the last 15 years an annual fee must be payed).
Supplementary protection certificates: 1 year for patents of medicines and pharmaceutical plant products. 4 renewals (of 1 year each) may be requested. Inventors of Paediatric medicines may request for a 6 months’ extra extension.
Utility Models: 6 years calculated from the application date, 2 possible extensions (of 2 years each) may be requested.
Portuguese Trademarks: 10 years, calculated from the registration date, unlimited 10 years’ renewals may be requested.
Logos: 10 years, calculated from the registration date, unlimited 10 years’ renewals may be requested.
Designations of origin: unlimited duration.
Geographical indications: unlimited duration.
Company/commercial names: unlimited duration.
Topographies of semiconductor products: 10 years, calculated from the application date (in the last 6 years an annual fee must be payed).
New plant varieties: 10 years, unlimited 5 years’ extensions may be requested.
Designs: 5 years, calculated from the application date, 4 possible 5 years’ extensions may be required.
Copyright: 70 years after the author’s’ death.
Plant varieties: 15 years for herbal plants and 20 years for woody plants.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
R: Usually, the owner(s) is/are the applicant(s). In what Regards to patents, utility models, topographies of semiconductor products and designs developed under an employment agreement (or similar) the right to register belongs to the company.
Which of the intellectual property rights described in questions 1-3 are registered?
R: All of them excepting know-how. Copyright may be registered, but its existence and protection does not depend on the registration.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
R: Both individuals and companies may apply for registration of IP rights. The procedure of registration is not exactly the same for all IP rights but there are some “common” steps: i) submission of the application; ii) publication in the IP Bulletin; iii) possible oppositions phase; iv) studies phase; v) decision.
How long does the registration procedure usually take?
R: It is impossible to say. The time the IP Institute takes to decide, for example, on a trademark application, can vary between 3 months and 3 years… It will depend on different elements, namely, the existence of oppositions.
Do third parties have the right to take part in or comment on the registration process?
R: Yes. In what regards to almost all the IP rights, a deadline is offered to third parties in order to submit their oppositions within the registration process.
What (if any) steps can the applicant take if registration is refused?
R: It depends on the IP right itself, but for most of the cases (IP rights ruled in the Portuguese Industrial Property Code) it is possible to appeal to the IP Court and then to the Court of Appeal. In some specific cases it is also possible to appeal to the Supreme Court. Some litigation regarding medical patent applications must be submitted to necessary arbitration.
What are the current application and renewal fees for each of these intellectual property rights?
Trademarks: Application: 123, 76 €; – Additional class: 37,37 €; – Renewal – the same as the application.
Logos: Application and renewal: 123, 76 €.
Designations of origin and Geographical indications: Application 123, 76 €.
Company/commercial names: application: 75,00 €.
Patents: Application (includes the annual fee regarding the first 5 years): 104,57 € + annual fee in the next 15 years.
Supplementary protection certificates: Application: 209,14 € + Annual fee; – 6 months’ extension for paediatric medicines: 679,70 €.
Utility Models: Application (includes the annual fee regarding the first 5 years): 104,57 € + annual fee (from 31,37€ until 62,64 € in the last one) in the next 10 years.
Topographies of semiconductor products: Application (includes the annual fee regarding the first 5 years): 104,57 € + 20,92 € annual fee in the next 5 years.
Designs: Application (5 products): 104, 57 €; – Additional product: 10,46 €; – Renewals (from 31,37 € until 62,74 €).
New plant varieties: Application 110,40 € – one year renewals (from 84,20 € in the first year until 241,80 € in the last year).
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
R: Usually, an extra period is offered in order to pay the renewal fees. In this cases it is also necessary to pay a penalty for the delay.
What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
R: A written document between the Assignor and the Assignee is the only requirement to assign the ownership of each intellectual property right.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
R: As regards the IP rights ruled by the Portuguese Industrial Property Code the assignment must be registered before the Portuguese Industrial Property Institute.
The consequences of failing to register before the Portuguese Institute it’s the fact that such assignment cannot be enforced against any third parties.
The other rights are registered near different institutes/associations that rules such rights and the consequence is the same.
What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?
R: A written document between the Licensor and the Licensee is the only requirement to licence a third party to use each of the intellectual property rights described in section A.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
R: As regards the IP rights ruled by the Portuguese Industrial Property Code the licence must be registered before the Portuguese Industrial Property Institute.
The consequences of failing to register before the Portuguese Institute it’s the fact that such licence cannot be enforced against any third parties.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
R: In general terms there are no different rights but it will depend on the licence agreement.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
R: Some infringements are crimes such as the violation of the exclusive granted by patents, utility models, topographies of semiconductor or designs. Counterfeiting, imitation or illegal use of trademarks may also be a crime. The violation or illegal use of designations of origin and geographical indications may also represent a crime. The fraudulent registration or abusive fraudulent maintenance of some rights can be a crime as well. Several copyright infringements are also considered crimes. Depending on the importance of the infringement, the violation of IP rights may only be considered a misdemeanours act, as well as the violation or illegal use of logos or commercial names. The practice of unfair competition acts is also considered misdemeanour.
This sanctions shall be invoked by the interested parties in Court or Arbitration proceedings. Parties may also submit complaints to custom authority or to other official inspection entities.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
R: In Portugal the enforcement options available are civil court proceedings, administrative court proceedings, administrative proceedings before the Costumes Authorities. The parties may also enforce IP rights before the Arbitration Courts. IP office proceedings only apply to the registration process.
What is the length and cost of such procedures?
R: If the dispute takes place in the Court, it is impossible to predict its length, but it is really rare to find final decisions released in less than 2 years. Arbitration proceedings use to be decided faster usually in less than one year.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
R: In what regards to most of the IP rights the IP Court is the one who have jurisdiction, which is a centralized and specialized Court. The procedure mainly consists in written allegations from each part (usually trial will only take place when witnesses hearings are necessary), the time to judgment and award of relief will take around two years. An appeal to the Court of Appeals is possible.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
R: There is no technical judge or a judge with technical experience in the Portuguese IP Jurisdiction, however, the IP Court is considered a specialized Court, once their judges only decide IP cases. Nevertheless, the Court or the parties can appoint an expert or experts for certain complex procedures. Depending on the nature of the IP right, both the Courts and the alternative dispute resolution centres may request technical support of engineers or other technical experts in order to help in the decision.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
R: The general civil procedure rules are available for compelling the obtaining and protecting of evidence like seizures, interim measures, inspections.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
R: In Court or arbitration proceedings it is possible to call witnesses in order to obtain evidence. Technicians/experts may also be called if Judges believe that their cooperation is needed. There are no specific rules in this matter, general rules must be followed. It is really common to call witnesses and technicians in what regards do patents or copyright disputes. It is less common regarding other IP rights.
What customs procedures are available to stop the import and/or export of infringing goods?
R: If someone suspects that infringing goods are being exported and/or imported, the best first reaction would be lodging a protective order to stop it. Parties may also submit a complaint near the custom authority or other official inspection entity. The Portuguese customs authority inspects all the movements that occur in custom and if they believe that any goods are suspicious they may order its apprehension until the Court decides if any infringement occurs.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
R: Yes, in what regards to reference medicines/generic medicines IP rights disputes, it is mandatory that the first stage of litigation takes place in mandatory arbitration proceedings.
What options are available to settle intellectual property disputes in your jurisdiction?
R: Court Proceedings, arbitration, mediation and other alternative settlement of disputes mechanisms.
What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
R: Portuguese law only requires evidence of the existence of the previous right and evidence of the real infringement. If the owner of a previous right believes that thirst parties are infringing theirs rights, they shall prove that.
What defences to infringement are available?
R: After the acknowledgement of the infringement, the harmed party may also start an infringement action near the Court/arbitration centre. Protective orders are the most efficient instrument in this cases.
ASAE (a public entity responsible for the commercial inspection) and the other official inspection entities shall proceed with its inspections in order to avoid IP infringements. If anyone suspects that an infringement is occurring, a claim must be submitted. Also, customs services shall oversee all the traded goods and act accordingly if any infringement is detected. Monitoring its client’s IP rights is also a common practice of IP private offices/lawyers.
Who can challenge each of the intellectual property rights described in questions 1-3?
R: Usually, only the owners of previous rights may challenge the new owners/applicants. Some rights may also be challenged by any interested party (including the state), even if they are not owners of previous rights.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
R: The first stage occurs after the publication of the application (in what regards to registered rights). As it is referred above, in what regards to almost all the IP registered rights, third parties may file oppositions in this stage of the application proceedings. If they don’t oppose, in most of the cases it is also possible to appeal from the decisions (usually to the IP Court) within a short period of time after. During the subsistence of the IP right, it is also possible to file cancellation proceedings.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
R: During the registration process, oppositions (to almost all the registered rights applications) may be filed in the IP Institute. The opposition procedure is quite simple: after the publication in the IP Bulletin, a deadline is given to third parties to file oppositions, after that period, the institute studies the application. In what regards to some rights, the institute may issue a provisional decision, giving the applicant the chance to answer to said provisional decision or, in some cases, to modify any element. Then, the institute issues a final decision. Said final decision is published in the IP Bulletin and any interested party has a deadline to appeal. The most commonly invoked grounds are related with the imitation of a previous right. Also, the practice of unfair competition acts is often invoked, either as an enforcement of the imitation or in an autonomous way. There are also other less frequent grounds, such as the loss of distinctiveness of a sign or the illegal use/abusive use of an IP right.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?
R: Yes, both are possible.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
R: The infringement of an IP right legitimates the harmed party to demand a compensation from the offender. If said compensation is not voluntarily paid, it may be claimed in Court or in any other alternative settlement of disputes process. When the parties don’t find by themselves a remedy based on an agreement, the Court/entity responsible for deciding the dispute may also order the cease of the infraction. When infringing goods are placed on the market, its removal may also be ordered. Sometimes these decisions are combined with compulsory penalties. If the infringement consists on a crime, the offender may also be condemned to prison or to the payment of a penalty fine.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
R: The costs of enforcement proceedings are very variable. In general, Arbitration Courts are more expensive than the Public Courts.
In Portugal we have such mechanism of costs recovery available for successful parties.
There are no IP rules in what regards to security of costs. The general rule of civil procedure shall be followed and it determines that the court may decide on which party shall support said costs (usually, if the infringement is proven, the Court decides that the offender shall pay the costs).