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13 October 2003
Due to intensified competition in the markets, the ever-increasing variety of goods and services on offer and the endless search for novelty, new elements continually appear as trademark components. However, it is not always clear whether such elements will be accepted as viable trademarks by the national authorities.
In order to ensure legal certainty and harmonize the criteria for trademark registration, the Portuguese National Industrial Property Institute recently issued a paper which clarifies the absolute grounds for refusal of a registration.
In order to be registered, a trademark must have distinctive character and observe honesty, ethics, fair trade, public policy, and national and European legislation. Trademarks may not consist of signs of high symbolic value or emblems of public interest.
A trademark must consist of a sign which is capable of distinguishing the goods of one undertaking from those of other undertakings, and must be represented graphically.
The requirement of graphic representation is not so easy to comply with when the mark consists of, for example, a tune or a fragrance. In the case of a tune it is necessary to submit the notes on a stave, as a verbal description of the tune will not be accepted. However, when considering a fragrance, a flavour, or even a motion or gesture, the difficulties associated with graphic representation impede protection under trademark law.
If a trademark is exclusively composed of colours, those colours must also be described, as the Intellectual Property Official Journal in which all trademarks are published is still printed in black and white.
Three-dimensional signs can only be represented by pictures or drawings showing an exact perspective of the shape in question. It is also recommended, although not compulsory, that a brief description of the shape be submitted.
However, the keyword with regards to trademark registration is 'distinctiveness'. Therefore, a trademark cannot be accepted if it merely refers to the kind, quality, intended purpose, value, geographical origin, means or time of production of the goods, or of the rendering of the service, which it is intended to represent. However, a trademark may contain generic and descriptive elements if these are combined with distinctive elements.
Likewise, registration will be refused if the trademark is composed only of words, signs or indications that have become customary in the current language and established practices of trade, or signs composed solely of the shape of the product. Trademarks which are simply devoid of any distinctive character will also be refused registration.
In the case of trademarks that consist of domain names, the use of terms which are commonly used on the Internet (eg, 'net', 'internet', 'cyber', '.net' or '.com') constitutes absolute grounds for refusal, unless these are combined with other signs with distinctive character. The same applies to slogans which are customarily used in the framework of a certain activity; these cannot become the property of a sole entity, but must remain available to all competitors in the market.
However, where a sign has acquired distinctive character through use, its registration may be accepted, as long as evidence of such use in the five years prior to filing of the application is submitted. In this respect, the Industrial Property Code takes into account secondary meanings acquired by certain expressions which, at first glance, might appear unacceptable.
In applying this provision the examiner will be objective, will distinguish offensive language from mere vulgarity, and will take into account the target of the goods and services to be represented by the trademark. For instance, the criteria will be more demanding where the relevant products are aimed at children, while a more permissive stance may be adopted for certain products exclusively intended for adults.
In addition, trademarks may not contain signs of high symbolic value or emblems of public interest, particularly those associated with religion, unless authorization has been granted by the appropriate authorities.
Finally, the National Intellectual Property Institute has committed to ensuring that the reasoning behind its decisions is clear, so that the applicant has
no doubts regarding the grounds on which a trademark refusal is based.
For further information on this topic please contact César Bessa Monteiro at Abreu Cardigos & Associados by telephone (+351 21 7231800) or by fax (+ 351 21 7231899) or by email (firstname.lastname@example.org).
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César Bessa Monteiro