In order to comply with the EU Directive 2015/2436 of the European Parliament and Council of 16 December 2015, which aims to approximate the laws of the Member States with regard to trademarks, as well as with the EU Directive 2016/943 of the European Parliament and Council of 8 June 2016 concerning the protection against illegally obtaining, using and disclosing know-how and confidential information (trade secrets), the Industrial Property Code approved by Decree-Law No. 36/2003 of 5 March currently in effect is now under review

The changes under discussion envisage significant adjustments in terms of trademarks, besides regulating the protection of trade secrets.

Below we highlight some points of the draft law (an initiative of the government) likely representing the most important new features with regard to trademarks, which are still subject to discussion and approval by the Parliament.

  1. The possibility to file for cancellation of a trademark registration with INPI within 5 years of the date of registration. Currently the cancellation is filed with the Intellectual Property Court and the time frame for such filing is 10 years.
  2. The renewal of a trademark registration will be due 10 years after the date of filing, and not after the date of the registration, as is currently the case.
  3. After the application is published, it will not be possible to make changes that substantially impact the trademark or expand the list of products and services. Currently changes are allowed to the sign and the list of products and services up to the final decision of the INPI regarding the registration of the trademark in question.
  4. Bad faith will be explicitly contemplated as one of the grounds for refusal of a trademark registration, as long as it is invoked during the opposition proceedings, whereas so far the code has been silent on this matter.
  5. During an opposition or following a provisional refusal on the basis of an existing prior trademark registration with more than 5 years, the applicant may request that the opponent or owner of the prior trademark file evidence of serious use of the prior trademark for the period of five consecutive years, prior to the filing or priority date of the later trademark application, otherwise the opposition or provisional refusal might be dismissed. Nowadays, it is not required to show evidence of use of the trademarks cited in the opposition proceedings.
  6. The powers assigned to a licensee are also under review, in as much as, unless otherwise stated, the licensee may only initiate an action in which infringement of a trademark right is claimed with the consent of the respective owner, and in the case of an exclusive license may do so if, after giving prior notice to the owner of the trademark, she does not herself initiate such an action within six months.

With regard to patents, the changes are not as profound and are basically related to the possibility of issuing up to three office actions instead of the current two.

Clarke, Modet & Co - PORTUGAL

Portugal Offices

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.