Trade and Service Marks

– Decree-Law No. 110/2018 of December 10, 2018, effective from July 1, 2019, with amendments, suppressions and additions to the Industrial Property Code of 2008 (Decree-Law No. 143/2008 of July 25, 2008) regarding the enforcement of IP rights.
– Decree-Law No. 143/2008 of July 25, 2008, effective from October 1, 2008, with amendments, suppressions and additions to the Industrial Property Code of 2003 (Decree-Law No. 36/2003 of March 5, 2003) regarding the enforcement of IP rights.
– Law No. 16/2008 of April 1, 2008, implementing into the Portuguese legal order the European Parliament and Council Directive No. 2004/48/EC of April 29, 2004.
– Order in Council No. 1098/2008 of September 30, 2008, ratifying the industrial property official fees.
– Order in Council No. 1098/2008 of September 30, 2008, ratifying the industrial property official fees, amended by Order in Council No. 1254/2009 of October 14, 2009.
– Order in Council No. 479/2010 of July 12, 2010 and Order in Council No. 176/2012 of May 31, 2012 (official fees established by Decision No. 1054 – A/2016 of June 23, 2016 of the Board of Directors of the Institute of Industrial Property).
– Decree-Law No. 176/80 (adopting the International Classification of Goods and Services as a principal system).

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 4, 1969.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 27, 1975.
– Madrid Agreement Concerning the International Registration of Marks with invocation of Art. 3bis.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, London Act.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act since April 17, 1991, and Geneva Act as of January 18, 2024.
– European Union Trade Mark Regulation.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Regulations under the Madrid Agreement and Protocol, which took effect on April 1, 1996.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, as adopted in Madrid on June 27, 1989, since March 20, 1997 (ratification approved by Decree No. 31/96 of October 25, 1996).

Filing

Applicant: any individual or legal entity who has a lawful interest and especially who is a trader or manufacturer. 

Applicants not living in the country: may act before the Portuguese Institute of Industrial Property, provided that they mention an address in Portugal, an e-mail address, or a fax number. If the representative is not a Portuguese official industrial property agent, a lawyer or a solicitor, a power of attorney must be presented for each filing. 

Marks of foreigners and nationals not living in the country: registration is possible without the filing of the corresponding home certificate. 

Registrable signs: a sign or group of signs capable of being represented graphically, particularly words, including personal names, designs, letters, numbers, sounds, color, the shape of the product or of its packaging, or by a sign or group of signs which can be represented in a way likely to permit the clear and accurate identification of the subject matter of the protection conferred on its proprietor, provided that they are capable of distinguishing the goods or services of one company from those of other companies.

Types of trademarks: trade and service marks, and collective marks (which may be made up of signs or indications used in trade to designate the geographical origin of goods or services). 

Collective marks: encompass certification marks (a particular sign owned by a legal person who controls goods or services or sets the rules by which those should abide), and association marks (which consist of particular signs owned by an association of natural or legal persons, whose members use or intend to use the same for goods or services).

Novelty: it is not required that the mark is new, but it must have a distinctive character in comparison with prior registered marks or pending applications for similar goods or services.

Not registrable: marks likely to cause confusion with others previously registered or involving a “risk of association” therewith; marks consisting exclusively of signs or indications used in commerce for designating kind, quality, quantity, purpose, value, place of origin of the products or time of production, as well as expressions considered of common use except where they have acquired a distinctive character in the commercial practice (secondary meaning); marks in which are included: (a) flags, arms or other emblems of any States, without consent of the competent authorities; (b) official signs, seals and stamps, without authorization; (c) coats of arms, decorations and distinctions of honor not belonging to the applicant; (d) medals likely to cause confusion with official decorations; (e) business names, company names, insignia not belonging to the applicant, if not authorized by the owner; (f) names or portraits other than those of the applicant; (g) illicit reproduction of literary or artistic works; (h) expressions or designs contrary to public order or morals; (i) false indications of source, nature, characteristics and utility of the products; (j) marks requested with the intention of bad faith.

Protection of well-known marks: registration is refused for that mark which, on its whole or on any essential part thereof is a reproduction, imitation or translation of a mark well-known in Portugal, if applied to identical or similar goods or services, and that may lead the consumer into error or confusion, provided the owner of the well-known mark applies for its registration in Portugal. 

Protection of reputation marks: the application for registration of a mark is likewise refused if the mark, although intended for goods or services which are not similar, is graphically and/or phonetically identical or similar to an earlier mark which enjoys a reputation in Portugal or in the European Union and wherever the later mark, without due cause, aims at achieving an unfair advantage over or be detrimental to the distinctive character or the reputation of the earlier mark. In this case also, the owner of the trademark which enjoys reputation in Portugal must apply for its registration, designating the goods and services on which its reputation is based. 

List of goods and/or services: each application can refer to goods and/or services of several classes subject to an extra fee for each additional class beyond the first one. 

Classification: international (Nice Agreement, 11th Edition). 

Priorities: may be claimed according to the Paris Convention (within six months of the filing date of the home application).

Territory covered: registered marks are valid in Portugal (including the Azores and Madeira Islands).

Filing requirements for an application (to be sent to resident agent):
1. Name, occupation and address of the applicant;
2. Copy of the mark or a sign/group of signs which can be represented in a way likely to permit the clear and accurate identification of the subject matter of the protection conferred on its proprietor;
3. Country where the first trademark application was filed and the respective date in case the priority should be claimed;
4. Specification of goods and/or services (International Classification);
5. Power of attorney signed by the applicant. No power of attorney is needed if the application is filed by an official industrial property agent.

Notes: (a) each application can cover as many goods or services as desired, even of different classes, subject to extra fees; (b) priority certificates are necessary only upon request of the Portuguese Institute of Industrial Property.

Electronic filing: available. 

Electronic signatures: are accepted.

Examination

Amendment or correction of application: is permitted at any time before decision of grant or refusal by the Portuguese Institute of Industrial Property, provided that the amendment does not substantially affect the trademark or extend the list of goods or services.

Publication: applications are published, before examination, in the daily Official Bulletin. 

Opposition: can be filed within two months after publication; the applicant can continue the dispute by lodging a reply within two months after the notification of opposition. When a trademark, registered for more than five years, is alleged to be an obstacle in an opposition procedure, the trademark's applicant, against which the opposition is lodged, may require the holder of the opposing trademark to provide evidence of serious use of that trademark in the five years preceding the date of the trademark application, whose granting of registration is contested.

Third party observations: any third party who objects the granting of a trademark registration may intervene in the registration case and submit his/hers/its own comments within two months after the publication of the trademark application, provided that the plea is based on absolute grounds for refusal of the trademark registration.

Examination: after the time limit fixed for oppositions/third party observations has elapsed (provided no oppositions have been made), or when the dispute has ended; examination is made as to form, inherent registrability and availability over prior marks, as well as other industrial property rights and registered company names. (Can also be obstructive if quoted in an opposition, as well as the copyright infringement and the acknowledgement that the applicant intends to make unfair competition or that this one is possible independently from its aim).

Provisional refusals are provided for. When a decision of provisional refusal is delivered by the Portuguese Institute of Industrial Property, during ex-officio examination, on the basis that it may lead to confusion regarding a priority trademark registered for more than five years, the trademark applicant may request that the holder of that trademark registration be notified to provide evidence of use. If evidence of use is not presented, the priority trademark referred to in the provisional refusal decision shall no longer constitute an obstacle to the granting of registration of that subsequent trademark application.

Disclaimers: available. 

Letters of consent: are taken into consideration by the Portuguese Institute of Industrial Property and courts. 

Disputes about ownership: only the courts are competent to judge questions of this nature. 

Application kept secret: not permitted. 

Appeal: can be lodged at the Intellectual Property Court or at ARBITRARE (Arbitration Centre for Industrial Property, Domain Names, Companies and Designations) against the decision of the Portuguese Institute of Industrial Property. Any of the parties can appeal against the sentence to the Court of Second Instance. 

Urgent registration and provisional registration: not provided for.

Granting

Delivery of document: the registration is granted if no opposition against the application for registration is lodged at the Portuguese Institute of Industrial Property, or if the opposition is considered irrelevant, and if no conflicting mark is found by the Examiner, or if no other reason exists for refusal. The grant decision is published in the Official Bulletin. A fee for grant must be paid within six months following the publication of grant. The issuance of a certificate of registration, following the publication of the grant decision, is no longer compulsory. This document will only be issued if explicitly requested by the applicant and following the payment of the respective official fees. There are two options: a certificate of registration in digital format (.pdf file) or in a classic paper format. The second option represents a higher official fee. 

Beginning, duration and extension of protection: protection only from date of grant of registration, being valid for ten years, and indefinitely renewable for further periods of ten years counting from the date of filing of the trademark application.

Kind of property: the property of a trademark can be assured only by its registration. 

Compulsory character of registration: registration of a trade or service mark is not compulsory. 

Prior user rights: rights of prior user cannot be claimed except where one uses a free or non-registered mark for a period not longer than six months; for the duration of this term he shall enjoy a priority right to apply for the registration thereof and shall be entitled to oppose the registration of the same mark. 

Obligation to use: if the mark is not subject to genuine use during five consecutive years, except for justified reasons, the registration may be declared as forfeited upon request by a third party. The computation of the first non-use period starts with the registration of the mark, which for international marks, shall be taken as the date of registration of same at the International Bureau (WIPO).  Note: the filing of Declarations of Intent to Use (DIUs) is no longer required since July 26, 2008. This requirement has been revoked both for national trademark registrations and for international registrations designating Portugal. Any trademark valid in Portugal, for which a DIU has not been filed in the past, may no longer be cancelled on this ground. However, as any other registration, such trademark registration may be subject to a cancellation action alleging the lack of use in Portugal; in such a case, the holder must provide such evidence of serious use, in order to avoid forfeiture.

Marking of registered goods: not compulsory. 

Text of marking: “Marca Registada” or the initials “M.R.” or “®”. 

Renewal: within the last six months of each period of ten years counted from the application date.

Latest term for renewal: up to six months after the normal period has elapsed, with payment of a fine.

Restoration: up to one year after the publication of the forfeiture of the registration, provided the restoration does not prejudice any rights of third parties. 

Modification of the mark and changes in the list of goods or services: possible before the grant of the registration. After the grant, only a limitation of the list of goods or services may be allowed as well as amendments or corrections not affecting the essential elements and characteristics of the registration. 

Assignment: the property of a trademark can be totally or partially assigned. The assignment must be recorded in order to have an effect towards third parties. If recordal of the assignment is requested by the assignor, the assignee should also be a signatory of the assignment document, or issue an express statement that he accepts the assignment. 

Licenses: licenses can be granted by an agreement, which must be recorded at the Portuguese Institute of Industrial Property. Use of a trademark by a licensee is considered as use by the owner of the registration. Licenses for applications are possible. However, the license lapses if the application is refused.

Modification of Protection after Registration

Cancellation of registered marks: the request for nullity and annulment of trademarks fall within the competence of the Portuguese Institute of Industrial Property. The Intellectual Property Court is competent when the request for declaration of nullity or annulment is filed in counterclaim within the scope of an infringement legal action being assessed by that Court. The Intellectual Property Court is the competent court of appeal for the final decisions handed down by the Portuguese Institute of Industrial Property in this procedure. The deadline for requesting the annulment of industrial property rights is five years counted from the date of the granting decision of those right.

Compulsory licenses and expropriation: non-existent. 

Use: as a rule a registered mark should be used unaltered, subject to forfeiture, except for minor alterations which do not harm the identity of the mark and may only affect its proportions, the material on which same has been stamped, engraved or reproduced and the ink or colors if the latter have not been claimed as one of the features of the mark.

Modifications of a registered mark: the identity of the mark cannot be harmed either by the addition or deletion of an express indication of the goods or services to which the mark is intended, or by some alteration of the owner’s domicile or place of business; a word mark registered in plain block letters may be used in any figurative appearance, provided it does not breach third party’s rights. 

Amendments to specifications of goods or services of a registered mark: can only be made provided this does not extend the scope of said specifications as originally applied for. 

Infringement and penalties: legal action against infringement of trademark can usually be brought before the courts, it being possible to include claims for damages. The proceedings may be initiated by seizing the infringing goods namely at the Customs Houses if they are imported. Criminal penalties are set by the court (within the limits fixed in the Industrial Property Code) as well as compensation for damages. An action for infringement may also be initiated by means of a complaint filed with the General Inspection of Economic Activities requesting the preliminary seizure of the infringing goods, subject to the discretion of the public prosecutor who may subsequently bring a criminal action against the infringer.

European Union Trademark (EUTM) Conversion

The filing requirements for the conversion of an EUTM application into a national application in Portugal are the same as for filing a national application

Time limit: within two months counting from the date of issuance of the notification of the Portuguese Institute of Industrial Property to the holder of the EUTM application or its designated representative in Portugal or at the EUIPO (this designation must occur when filing the conversion request at the EUIPO). Partial conversions are allowed.