By Dr. Eduardo Serra Jorge [email protected]
In his new monthly column, Lawyer Eduardo Serra Jorge from lawyers firm Eduardo Serra Jorge & Maria José Garcia – Sociedade de Advogados, R.L., will be addressing legal issues affecting foreign residents in Portugal.
Industrial property rights are meant to protect inventions, aesthetic creations (designs) and signs used to distinguish products and companies in the marketplace, thus protecting the results of investments in innovation (whether it be technological or commercial) and give to their holders the exclusive use of them.
Differently, copyright protects literary and artistic works.
According to the Portuguese Industrial Property Code, there are different industrial property rights:
• Patents and Utility Models (invention’s rights);
• Designs (to protect the appearance or design of an object);
• Trademarks, logos, awards, appellations of origin and geographic indications of source (they are meant to protect written signs such as a picture or a word, that serve to identify products, services, establishments or entities in the market)
A Trademark is a signal that identifies products/services of a company in the marketplace and therefore creates a distinction from other companies. Registration is not mandatory, but it is strongly advisable to proceed with it due to the multiple advantages it offers.
The person who registers a trademark has the right to prevent other people/companies from using an identical or similar sign without consent in an identical or similar product/service.
Trademarks can consist of a sign or a set of signs capable of being graphically represented. Therefore, there are different types of trademarks:
• Verbal trademarks: verbal elements only (namely words, letters or numbers. They may also include names of persons).
• Pictorial trademarks: pictorial elements only (drawings, images or figures).
• Mixed trademarks: verbal and pictorial elements.
• Sound trademarks: sounds.
• Three-dimensional trademarks: shape of the product or its packaging.
• Slogans: advertising slogans can be registered, independently of any copyright protection they may have also associated.
Some Trademarks cannot be registered, either because they have no distinctive character or because they have the potential to create confusion to the consumer.
Trademarks which are against the law and public order, or that offend morality and proper behaviour, as well as the ones that constitute a violation of another person’s rights or that might favour acts of unfair competition, are also prevented from registration.
Usually the holder of the registered trademark labels signs/logos with a TM or a ®.
How to register a trademark in Portugal?
1. Submit a registration application – it can be done online or by sending the paperwork to the Portuguese Institute of Industrial Property (INPI). Please note that it is advisable to previously search at the INPI’s website if there is already an identical or similar registered trademark. There is a form that must be fulfilled with the requested information, and you are always allowed to contact the INPI’s services to clarify doubts.
2. Pay the due fees – If you ask for the registration online, the fees will be lower than if you present the papers to be analysed.
3. Analysis and publication of the registration’s decision – The competent services will analyse the request and check if everything is in order, and if so, the final registration’s decision is published in the Portuguese Industrial Property Bulletin. The ones who may feel harmed by a previous registration are able to present the opposition before the final decision.
If you disagree with the decisions adopted by the INPI, you are allowed to present an appeal to the Commercial Courthouse in Lisbon within a deadline of two months from the date the final decision was published in the Portuguese Industrial Property Bulletin.
You must also be aware that the registration obtained in Portugal via INPI does not immediately protect your trademark abroad, but it allows its holder in Portugal to be granted with a six or 12 month priority if she/he decides to ask for protection in other countries.
You can also request protection for the European Union countries as a single block, through a Community Trademark or through an International Trademark Registration.
By protecting your trademarks, you will be protection your business.
Dr Eduardo Serra Jorge is founding member, senior partner and CEO of lawyers firm Eduardo Serra Jorge & Maria José Garcia – Sociedade de Advogados, R.L., created in 1987. He can be contacted at his Faro office at Gaveto das Ruas Pedro Nunes e José de Matos, 5 R/C, on telephone +351 289 829 326, Fax. +351 289 829 327 or email: [email protected]. Alternatively, please visit www.esjmjgadvogados.com