06-25-2012 (Newsletter Issue 10/12)Official Fees IncreasedThe Intellectual Property Office of Portugal has increased its official fees under Administrative Order No 176/2012 of May 31, 2012. The new fees for applications for the registration of trademarks came into force on June 10, 2012.
The new trademark application fee has changed from EUR 101.40 to EUR 120.00 in one class. The fees for additional classes remain the same with EUR 30.42.
Source: J. Pereira da Cruz, S.A., Portugal and Raul César Ferreira (Herd.), S.A., Portugal
04-17-2012 (Newsletter Issue 6/12)
New IP Court
The Ordinance no. 84/2012, of March 29, 2012, has installed the First Chamber of the Intellectual Property Court, constituted by one judge.
This Court has initiated its functions on March 30, 2012. However, legal proceedings that have been initiated prior to the court installation will kept being judged by the courts in which they are currently pending.
The Law that created this Court predicts that a Second Chamber will be created once the workflow justifies it.
03-27-2012 (Newsletter Issue 5/12)
Domain Registration Rules Liberalized
A new regulation of .pt domain registration came into force on March 1, 2012.
The liberalization of these rules will make the registration system of .pt domains simpler for users. The requirement to be based on a trademark registration will be removed. The new rules come fully into force on May 1, 2012.
It is provided a grace period of 60 days, starting on March 1, 2012 until May 1, 2012 during which the owner of IP rights in Portugal can proceed with the registration of the .pt domains based on those rights.
As a result of this liberalization priority IP rights in Portugal can easily registered as .pt domains by any entity.
Source: MarquesMarcas LDA., Portugal
10-25-2011 (Newsletter Issue 12/11)Project Seniority ImplementedThe Portuguese Institute of the Industrial Property (INPI) has implemented the Project Seniority. This project aims to harmonize the seniority data between OHIM and National Offices and improve the data accuracy and customer satisfaction.
For more information about this project please click here
07-01-2011 (Newsletter Issue 9/11)
Official Fees Increased
The Portuguese Patent and Trademark Office announced an increase of the official fees effective from July 1st, 2011. The increase corresponds to 1.4% on all official fees for all services.
Source: Baptista, Monteverde & Associados, Portugal
09-01-2010 (Newsletter Issue 14/10)New Rules on Registration of Domain NamesThe FCCN (the Portuguese domain name system managing body) announced a new set of rules regarding the registration of domain names under the ccTLD (country code top-level domain) .pt, which came into force on July 1, 2010.
The main changes are
- Simplification of the registry on .com.pt and org.pt;
- Making the submission easier;
- Arbitration as a mean to solve conflicts
- Domain names under .pt must match a registered word trademark (national, European Communitiy or international registration designating Portugal)
- Reduction of prices
For more information please click here
10-28-2009 (Newsletter Issue 4/09)
Registration Fee No Longer Due
Ministerial Order No. 1254/2009 was published on 14th October 2009. It introduces some changes in the Portuguese Patent and Trademark Office (PTO) official fees. These changes have taken effect on 23 October, 2009.
Registration fees concerning trademarks, logos, awards, designations of origin and geographical indications, as well as associated fees (surcharge and revalidation) are no longer due.
Formerly, the final registration of these rights depended on the payment of a registration fee within six months after the PTO's decision of grant. As of October 23, 2009, the registration fee is no longer due.
This Ministerial Order is applicable not only to applications submitted after October 23, 2009 but also to applications for which, at that date, the deadline for payment of the registration fee or its surcharge is still ongoing.
Legal basis is the “Industrial Property Law” and the “Decree Law 143/2008” of July 25th, 2008, in force since October 1st, 2008. Portuguese trademarks are also protected on the Azores and Madeira. Portugal is a member of the Madrid Agreement, the Madrid Protocol and the European Union.
Trademark protection is obtained by registration.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, letters, numbers, devices, combinations of colours, the form of a good or its packaging, sound marks and any combination of the mentioned signs. Advertising slogans are also registrable provided that they are distinctive.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks.
The application is filed at the Patent Office (INPI).
Multiple-class applications are possible.
Foreign applicants need a local representative.
A power of attorney is necessary for applicants not represented by an official agent.
Otherwise a power of attorney is not necessary. Foreign applicants do not need a domestic registration. The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 6 to 8 months. After formal examination, the trademark application is published in the Portuguese Industrial Property Gazette for opposition purposes. This official gazette is published online on a daily basis. When the opposition phase comes to an end (or an opposition is filed) the application is submitted to an examination. Afterwards, the final notification is issued. The registration of the trademark is published as well.
The opposition period is 2 months from publication of the application, extendable for an additional month. After the end of said term, late oppositions will not be accepted.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
A trademark registration is valid for 10 years from the date of registration, not the application date. It is renewable for periods of 10 years.
The grace period is 6 months from the expiration date of the trademark.
A trademark must be used within 5 years from the registration date or the registration will become vulnerable to cancellation for non-use (unless there is a justified reason). Subsequent use of the trademark can restore protection provided that no cancellation of the registration has yet been declared by the Portuguese Industrial Property Office.
The trademark application fee is EUR 120.00 for one class and EUR 30.42 for each additional class.
Trademark Licence Agreement
In Portugal a licence to use a trademark has to be granted in writing. Licensing of unregistered marks is not permitted. A licence may be total or partial, free of consideration or not, limited with respect to the territory or for the entire country and for the whole of the duration of the mark or for a shorter time. The sale of a registered trademark does not automatically terminate the licence agreement.
There are provisions in law for the recordal of a licence with the Trademark Office. Recordal is not mandatory. The licence is only effective against third parties after recordal with the Portuguese PTMO. There is no time frame for a recordal and no prescribed form for a licence agreement. It is necessary to file a certified translation of the licence agreement, if not in Portuguese. There is no requirement to file a power of attorney in the event that an agent is employed that is officially recognised. There is no prescribed content for a licence agreement, but it must state essential elements of identification (names and addresses of the licensor and licensee, an indication of the trademark, the class of goods/services, the trademark granting date and the duration of the licence).
A licence becomes effective and enforceable against third parties after the recordal with the PTMO. All licences recorded with the PTMO are published in the Portuguese Official Industrial Property Bulletin.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the owner in infringement proceedings. He may also call upon the owner to institute such proceedings. If the licensee has done so, but the proprietor has refused or neglected to institute proceedings, he can institute proceedings in his own name. Such proceedings may be instituted after a period of time provided by the licence agreement, if any, or in absence of such a provision at any time. The licensee must request the trademark owner to intervene as a party in such proceedings.
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