We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
14 July 2003
Following the publication of the new Industrial Property Code, which came into force on July 1 2003, the National Industrial Property Institute (the government body responsible for the registration of industrial property rights) has issued two regulations in order to clarify certain provisions of the code regarding patents, utility models and designs, and trademarks.
In the field of designs, the most significant clarification concerns the definition of an 'informed user', which is applied when assessing whether a design meets the requirement of individual character. An informed user is someone who is not an expert, but who has a good knowledge of the product concerned - that is, someone whose level of knowledge lies between that of the 'consumer' referred to in the trademark regime and the 'expert' referred to in the patent regime.
The code gives the user of a non-registered trademark a priority right to register it within a six-month period. However, the new regulation clarifies that the user must present sufficient evidence of its use of the mark during that period - most notably by presenting the product itself, as well as orders, invoices, packages, labels and evidence of advertising.
A trademark must have distinctive character; otherwise the registration will be refused. However, a trademark may subsequently be registered if distinctive character is acquired. The applicant must present evidence of how a trademark which originally comprised of merely descriptive, common and customary elements acquired distinctive character over the past five years, showing that consumers actually identify the producer of the products concerned. The assessment of whether a mark has distinctive character will take place at the time the application is examined.
Trademarks must be actually used; otherwise they will be cancelled, unless valid reasons for non-use are given. The Industrial Property Code expressly refers to the genuine use of the trademark, as properly registered, without modifying its distinctive character and in connection with the products or services for which it has been registered.
The regulation on trademarks develops the definition of 'genuine use', stating that the effective commercial use of a trademark implies continuous concrete acts, directed at consumers in general (and not private use).
After five years of non-use, the National Industrial Property Institute or a third party may commence a revocation procedure, during which the trademark owner will be given the opportunity to present evidence of use. This evidence may consist of orders, packages, invoices, statements of buyers, photographs, labels and advertising.
Trademarks and other industrial property rights - notably patents, utility models, topographies of semiconductor products and designs - may be assigned by their owners. Either party may request registration of the assignment by paying the respective fee and presenting documentary evidence of the assignment.
The registration of trademark operation licences can also be requested by either party to the transaction, by paying the respective fee and presenting evidence of the agreement.
The provisions regarding assignment also apply to the pledge of industrial property rights, which must be registered by the parties and subsequently published in the Intellectual Property Official Journal. All resultant acts must be performed by the pledgor.
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 (email@example.com).
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.
César Bessa Monteiro