The Lisbon Court of Appeal recently found that the trademark BELCANTO, used by the Belcanto restaurant in Lisbon, was a "trademark with a reputation" and another party's application to register the trademark to sell wines. The judgment shows that Portuguese case law is departing from the mere quantitative parameters of assessing the reputation of a trademark to focus on the relevance of a mark's national and international recognition.
The new Industrial Property Code recently entered into force with a number of amendments resulting from the implementation of the EU Trademark Regulation. Most of the changes represent a real break with the previous legal framework. The main changes concern trademark registration, the scope of rights conferred by patents and limitations on the subject matter of utility models.
The IP Court has granted a supplementary protection certificate (SPC) for a second medical use, despite the existence of a previous SPC for the same product and the same basic patent, and contradicting the practice of the Portuguese Patent Office. The decision illustrates the harmonisation of Portuguese jurisprudence with European Court of Justice jurisprudence on SPCs.
The government has finally enacted amendments to the Code of Copyright and Related Rights and the Industrial Property Code to transpose the EU Enforcement of IP Rights Directive. Although silent on certain problems, such as the need to train magistrates on specific industrial property issues, they include helpful measures, such as the right to apply for periodic penalty payments against infringers.
In 2006 the government created a fast-track system for purchasing registered trademarks as part of its programme to simplify company registration. The system now allows applicants to purchase a pre-registered trademark without incorporating a company, but may limit the potential value of a trademark as a marketing tool.
The Lisbon Court of Appeals was recently asked to rule on, among other issues, the correct interpretation of the term 'trade name'. Some experts maintain that the expression covers not only an establishment's trade name (ie, its brand name or logo), but also its corporate name.
The publication in a magazine of the ending of a popular book led the Portuguese Authors' Society to sue the magazine publisher for copyright infringement and damages for loss of sales. The Supreme Court accepted the publisher's fair use defence in respect of infringement, but changes to the Copyright Code to protect the normal exploitation of a work will give rights holders a stronger case in the future.
The National Registry of Legal Entities has registered hundreds of trademarks, which are now available to any person wishing to incorporate a company and register the company name as a trademark under a new fast-track system. However, for all its advantages of time and cost, granting trademarks in this way may suggest that registration is immediately definitive, which is far from the case.
A recent decision to file criminal complaints against unidentified individuals for sharing music files was the first such action to be taken against peer-to-peer network users. The outcome of the investigations will clarify whether a person who allows others to download copyrighted material is breaking Portuguese law, but broader questions remain over the recording industry's approach to copyright issues.
This year marks the 250th anniversary of the creation of one of the oldest geographical indications for wines - the Região Demarcada do Douro - which is associated with the production of the world-famous port wine. However, the past few years have brought problems for those who advocate strong protection of geographical indications and other traditional terms used to identify goods.
Creative Commons licences encourage the use and distribution of copyright material in cases where rights holders wish to waive certain rights. Such licences typically require the author to be identified and may attach other conditions relating to the use of the material. Portuguese translations of the standard licences, adapted to the requirements of national copyright law, are due to be ready by the end of 2005.
The Lisbon Commercial Court recently confirmed the decision of the National Industrial Property Institute to reject an application to register the trademark INTERNET.COM. The court considered that the words were not sufficiently distinctive and stressed the need to leave such generic terms available for general use in the interest of competition.
In 2000 the Portuguese government created the Incentives Scheme for the Use of Industrial Property, which aims to stimulate research and development, creativity and innovation by companies. In March 2005 a new regulation was issued which extended the scheme to applications for marketing authorizations of pharmaceutical products.
Where a trademark owner acquiesces for five years to the use of a confusingly similar mark which was registered after its own, it loses the right to seek the annulment of that mark. The Supreme Court recently confirmed that this principle also applies to other distinctive marks, such as corporate names.
Recent amendments to the Copyright Code implement the EU Directive on Copyright in the Information Society in Portugal. Among other things, the revised code envisages several exceptions and limitations to copyright, and introduces a new chapter on technological protection measures and rights management information.
A Portuguese company has succeeded in registering its MARBELO trademark in the face of opposition from tobacco giant Philip Morris, which alleged that consumers might confuse the mark with its own MARLBORO trademark. The Supreme Court found this unlikely, since MARBELO is a combination of the Portuguese words for 'sea' and 'beautiful' while MARLBORO is an invented expression with no meaning.
The Constitutional Court has found unconstitutional a provision specifying that the amount of the private copying levy imposed on audio and video recording equipment and media is to be determined by ministerial decree. The court ruled that this was in breach of Article 103(2) of the Constitution, which establishes the principle of legality in taxation matters.
The National Intellectual Property Institute refused to register 'Hemingway' as the name of a restaurant. It held that a foreign-language name cannot be used unless requested by a national of the state in which that language is spoken, and that registration might be considered misleading. In overturning the decision, the Court of Appeal made several points on the use of historic names.
In order to ensure legal certainty and harmonize the criteria for trademark registration, the Portuguese National Industrial Property Institute has issued a paper which clarifies the absolute grounds for refusal of a registration. Among other things, a trademark must have distinctive character and must not incorporate highly symbolic signs or emblems.
Including: Patents, Utility Models and Topographies of Semiconductor Products; Designs and Models; Trademarks; Company Names and Logos; Copyright.