In a decision dated 14 June 2021 the EUIPO’s Board of Appeal confirmed that a sign representing a vehicle containing a fully charged battery with a cable is devoid of any distinctive character and cannot be a valid trademark.
Bridgestone Corporation applied to register a pictural representation of a car as a figurative European Union mark (depicted below) for goods in class 12, namely tyres, inner tubes, wheel parts for vehicles.
The EUIPO examiner issued a decision totally refusing the registration based on the finding that the sign applied for is commonly used and is customary in trade in relation to electric cars with a rechargeable battery. The goods applied for, which are tires for cars or other vehicles, would be identified by the relevant consumer, who is an average as well as a specialized professional, as tires specially designed and produced for electric cars or electric vehicles.
The applicant appealed.
Decision of the Board of Appeal
The applicant claimed that there is some ambiguity in what the battery in the sign represents and that the battery symbol itself can be represented in multiple different ways.
However the Board considered that the contested sign consists of an obvious and clear representation of a rechargeable electric vehicle, with no striking characteristics which would allow consumers to identify such a sign with a particular commercial origin. It does not depart significantly from the standard representation of a rechargeable electric vehicle and the Board considered that it will be immediately perceived as a general reference to rechargeable electric vehicles. Consequently, the consumer will invariably perceive it merely as a typical icon for cars or other rechargeable electric vehicles.
Therefore, the Board upheld the examiner’s findings that the sign applied for lacks distinctive character within the meaning of Article 7(1)(b) EUTMR and is not eligible for registration as a trademark.
The Decree-Law 9/2021 of 29 January approved a new Legal Regime for Economic Offences in order to harmonize and simplify the existing administrative offence regimes of economic activities (with the exclusion of the environmental, financial, tax and customs, communications, competition and social security sectors).
Among the main innovations introduced by the new regime are:
- The graduation of offences into light, serious and very serious, with the amounts of fines varying depending on the nature of the agent (individual person or legal person) and the size of the infringer (micro, small, medium or large enterprise).
- For offences commited through the Internet: the competent administrative authority will be able to apply precautionary measures, e.g. the removal of content, the restriction of access to online interfaces, the imposition of alerts to consumers or the blocking of websites.
The new law establishes a new general framework on the procedures, sanctions and measures applicable to economic administrative offences and amends dozens of sectorial laws relating to these activities, including the Industrial Property Code (approved by Decree-Law No. 110/2018 of December 10).
The acts of unfair competition and violation of protected trade secrets foreseen in the IP Code are now classified as very serious offences, which entails a considerable increase in the minimum fines applicable for small, medium and large enterprises.
According to the IP Code in force, any legal person who commits an unfair competition offence faces a minimum fine of 5000 Euros. With the new law the minimum fines will vary depending on the size of the company defined by the number of employees:
- microenterprise (less than 10 employees): 3000 Euros
- small enterprise (between 10 and 49 employees): 8000 Euros
- medium enterprise (between 50 and 249 employees): 16000 Euros
- large enterprise (250 or more workers): 24000 Euros.
The amendments will enter into force on 28 July 2021.
In a recently published decision the Lisbon Court of Appeal has considered that a trademark depicting the word FASCISTA (fascist) may not be registered since it contains an “expression or figure contrary to the law, morals, public order and accepted principles of morality”, which is a ground of refusal of registration foressen in article 231(3)(c) of the Industrial Property Code (Industrial Property bulletin No. 2021/02/24).
The applicant has originally filed an application for registration of the word mark FASCISTA for “wines; alchoolic beverages except beers” in class 33; following a provisional refusal of registration, the trademark was changed to include a device, but still contained the word FASCISTA:
The INPI (Portuguese Industrial Property Office) issued a final refusal of registration based on the aforementioned rule of the IP Code, stating that the relevant sign promoted an ideology that is currently repelled by the collective conscience of the society and also by the Portuguese Constitution.
The applicant did not agree with the INPI’s decision, therefore appealing to the Intellectual Property Court (IPC). Among other arguments, the appellant submitted that there were already registrations in force concerning trademarks which were allusive to fascism such as FACHO, FACHÃO, ESTADO NOVO, TERRAS DE SALAZAR, GRANDE DITADOR and PIDE.
The court confirmed the refusal of registration, remarking that the word FASCISTA has an obvious political connotation. The ruling has emphasized that fascism is nowadays rejected by public conscience, by the juridical system and by a set of principles rooted in the collective community. Interestingly, the 1st instance court considered that situation was somehow made worse by the kind of goods covered – insofar as they are generally consumed in parties and other social interaction environments – and by the inclusion of a wing in the device element – which, in the court’s opinion, might lead to an erroneous association between fascism and freedom.
In a further appeal, at the Lisbon Court of Appeal, the applicant has argued that the refusal was contrary to freedom of expression, indeed tantamount to an act of “censorship”, and also that it was arbitrary considering the existence of registrations in force for several comparable marks.
However, the Court of Appeal confirmed the previous decisions of the Office and 1st instance court. The higher court concluded that the grant of registration to such a trademark “could legitimately be perceived as a promotion of, or an appeal for the organization of, a political movement espousing that kind of ideology (fascism)”, especially considering the relevant goods – and stressed that the founding of such organizations is prohibited by the Portuguese Constitution. The inclusion of a wing device was also commented, with the Court of Appeal going even beyond the 1st instance decision by stating that said element enabled associations with Nazi symbols (the imperial eagle) or the Italian fascism.
In short, the Court of Appeal decided that it was also for trademark law to guarantee public safety against all registered trademarks that infringe fundamental principles and rules of societal organization, which includes protecting people from being exposed to signs that might intimidate them through association with violent organizations or past atrocities.
We are delighted to announce that this year, once again, the well-known international magazine Managing Intellectual Property (MIP) has elected Simões Garcia Corte-Real & Associados “Trademark Prosecution Firm of the Year” in Portugal for the work performed in 2020.
Our firm is honoured to be selected for an important award that is preceded by impartial research on the basis of opinions of clients, peers and IP practitioners from around the world.
We are profoundly grateful to all the SGCR team and all our clients who have made this award possible once again for a second consecutive year!
MIP has also published the IP STARS 2021 rankings listing Simões, Garcia, Corte-Real & Associated as a recommended firm in “patent prosecution” (2020- tier 2), “trademark contentious” (2021) and “trademark prosecution” (2021- tier 1).
As of February 1, 2021 the Macau IP Office has change its name to Economic and Technological Development Bureau (DESTD).
According to Regulation No. 45/2020 the DESTD is responsible for the study, coordination and effective implementation of the economic and technological development policy of the Macao Special Administrative Region.
Among other departments the DESTD includes and Intellectual Property Department that is competent for protection and registration of industrial property in Macao.
On 1 January 2021, Portugal took responsibility for the the 6 months rotating Presidency of the Council of the EU. During this 6-month period, the presidency chairs meetings at every level in the Council, helping to ensure the continuity of the EU's work in the Council.
The priorities of Portugal's presidency are driven by its motto: "Time to deliver: a fair, green and digital recovery".
The presidency programme focuses on five main areas, which are in line with the goals of the EU’s strategic agenda:
- strengthen Europe’s resilience
- promote confidence in the European social model
- promote a sustainable recovery
- speed up a fair and inclusive digital transition
- reaffirm the EU’s role in the world, ensuring that this is based on openness and multilateralism
For industrial property matters the programme of the Portuguese Presidency is the following:
We will give visibility to the benefits of protecting industrial property rights and promote the industrial property system. In this context, we will promote innovative solutions, especially in the area of green technologies and artificial intelligence, as well as the fight against counterfeiting. In this area, we will organize a high-level conference on intellectual property and the digital transition to be held in Lisbon in February.
During the Portuguese Presidency, it will be up to the National Institute of Industrial Property (INPI) to continue the work carried out by previous presidencies in matters such as Design, Enforcement, the Unified Patent Court, Supplementary Certificates of Protection and Geographical Indications. According to the INPI, “particular attention will be paid to issues directly related to Small and Medium-sized Enterprises, in particular, to discuss how Industrial Property can help this sector to mitigate the difficulties it is going through in the current context”.
The Lisbon Court of Appeal decided an action in which the plaintiff claimed copyright and trade dress protection for a pen, specifically the Stabilo Pen 68.
Citing the interpretation given by the EU Court of Justice in the the Cofemel judgement, the Court of Appeal found that copyright protection could not be recognized since the Stabilo Pen 68 was not considered an original work, in the sense of being an intellectual creation of their author.
Schwan - Stabilo Schwanhausser Gmbh & CO KG filed an action against Branco e Negro, Lda and Clave Denia, SA regarding the sale of certain pens in their online and physical Ale Hop shops. The plaintiff claims infringement of copyright on the Stabilo Pen 68 and unfair competition (based on product imitation and parasitic competition), seeking the prohibition of sales and damages.
The Stabilo Pen 68 is a coloring felt-tip pen marketed since 1968. It has a hexagonal shape and white edges, with the cap and the color of the wider sides of the pen matching the coloring color and alternating with the white stripes.
The defendant submitted that the claims are groundless since the plaintiff has no intellectual property rights and there was no unfair behavior. The IP Court agreed with the defendant and rejected the claims.
The Stabilo Pen 68
The defendant’s products
Court of Appeal
On appeal Schwan - Stabilo alleged that the absence of any form of industrial property right protecting the format and/or appearance of the Stabilo Pen 68 such as a 3D mark or a design right, does not exclude the possibility of copyright protection in accordance with the Cofemel judgment of the Court of Justice. The appellant mentioned in particular that the distinctive white edges of the Stabilo Pen 68 are the result of a “creative exercise and freedom” and not functional characteristics.
The higher court confirmed the findings of the 1st instance IP Court.
The Court of Appeal started by noting that the Portuguese legislature established the principle of cumulation of copyright law protection and design law protection, replicating in part article 17 of the Directive 98/71/EC thus leaving, to doctrine and case-law, the task of interpretation in accordance with the Court of Justice decisions namely the Flos case (C-168/09), the Infopaq International case (C-05/08) and the Cofemel case (C-683/17).
The court noted also that according to the Cofemel case, designs may benefit from copyright protection only if they are classified as “works” for the purposes of Directive 2001/29/EC, which implies two cumulative requirements: (i) it must be an original object, in the sense of being an intellectual creation of the author himself, reflecting his personality, expressing his free and creative choices; (ii) it must be an object identifiable with sufficient precision and objectivity. The CJEU stressed that the protection of designs, on the one hand, and the protection conferred by copyright, on the other hand, pursue fundamentally different objectives and are subject to different regimes and which are not mutually excluded, so that the fact that a design generates an aesthetic effect does not in itself make it possible to determine whether that model constitutes an intellectual creation which reflects the freedom of choice and personality of its author. The court conluded that “it has therefore become clear that not every design may benefit from the protection of copyright, but only those which, in the light of copyright, can be classified as works".
Thus the court considered that notwithstanding the visual and aesthetic effects that characterize the Stabilo PEN 68 (arising from their shape, colors and, in particular, the white stripes), the pens in question are not original, in the sense of being an intellectual creation of the author, reflecting his freedom of choice, his personality, his particular perception of the world, nature and things, expressed (with precision and objectivity) through the creative act, transcending the mere utilitarian perspective.
Trade dress and unfair competition
The court accepted that in general the imitation of the external characteristics of a product, that is, its visual presentation (including “words, pictures, colours and shapes”), may amount to unfair competition because it may be a free ride on the competitor's image, able to create confusion in the mind of the public.
However in the presente case, the plaintiff’s products have other features that prevent any possibility of confusion namely the word mark (STABILO) engraved on the pens themselves and on their packaging. This and their writing characteristics allows sufficient differentiation for consumers. Furthermore the plaintiff was unable to obtain registration of a 3D mark since EUIPO considered that the visual appearance of the pens – namely the hexagonal shape and the white lists – are not sufficiently different from other pens on the market. Consequently all claims were rejected.
On 14 September 2020 the EU and China signed a bilateral agreement to protect 100 European Geographical Indications (GIs) in China and 100 Chinese GIs in the European Union against usurpation and imitation.
From the EU side this agreement is considered to be an important step to protect the European GI products which are renowned for their quality and diversity, products such as the iconic Cava, Champagne, Feta, Irish whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego.
At the same time the agreement contributes to strengthening the trade relationship with China, with regard to the agri-food sector.
In 2019, China was the third destination for EU agri-food products, reaching €14.5 billion. It is also the second destination of EU exports of products protected as Geographical Indications, accounting for 9% by value, including wines, agri-food products and spirit drinks.
Among the Chinese GI products, the list includes for example Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).
In Portugal the agreement with China was considered “historic and comprehensive” by the President of the Douro and Port Wine Institute. From now on the GIs Douro, Porto, Port e Oporto, are among those protected in the Chinese market which means that only wines with the Douro and Porto designations that comply with their certification and control requirements may be marketed on the Chinese market.
Following the signature of the agreement and the European Parliament consent, it will officially be adopted by the Council. The agreement is expected to enter into force at the beginning of 2021.
The Portuguese Government is preparing a proposal for further changes to the Industrial Property Code.
The code currently in force was approved by the Decree-Law No. 110/2018, published on 10 December 2018, having started its application just over a year ago. Despite the short time that has elapsed, the Government has recently sent to the stakeholders a proposal for new amendments. The Government considers that it is necessary to revisit this matter due to the following main reasons:
- to provide for the possibility of the European Patent Office, instead of the Portuguese PTO, preparing the Research Report with Written Opinion based on a translation of the claims provided in national patent applications;
- to reintroduce rules on the allocation of a classified security regime for some inventions that may be of interest to national defense;
- and to correct errors detected and include clarifications of some rules; particularly in the field of trademarks and logotypes, the proposal foresees extending the proof of use requirement to logotype holders under the same terms provided for trademarks.
We will return to this topic when the amendment is adopted.
The IP Office of Mozambique has issued a note on Substantive Examination of Patents (Notice 2/2020 published on 15 June 2020). The note evokes the Mozambican patent law regarding patent application procedures on two specific points, namely article 66 and article 69 of the Industrial Property Code.
First, under article 66 the IPO after the examination of formalities will proceed to publish an abstract of the invention within 18 months after the date of application or the date of priority.
Second, under article 69, the applicant should file a request for the substantive examination of the patent and pay the respective fee within 36 months after the date of application or the date of priority. Importantly, the IPO note points out that if such request is not filed the application will be deemed withdrawn.
The mentioned article 69 also states that where deemed necessary, the IPO may request technical assistance or a substantive examination from national or international technicians or specialized entities.
According to the Decision No. 711/2020 of the Management Board of the IP Office and the Government Regulation No. 1098/2008, new official fees are applicable in the Industrial Property Office of Portugal as from 1 July 2020.
All official fees have been slightly increased in accordance with the inflation rate.
The well-known international magazine Managing Intellectual Property (MIP) has named Simões Garcia Corte-Real & Associados “Trademark Prosecution Firm of the Year” in Portugal for the work performed in 2019.
Our firm is honoured to be selected for an important award that is preceded by impartial research on the basis of opinions of clients, peers and IP practitioners from around the world.
MIP has also published the IP STARS 2020 rankings listing Simões, Garcia, Corte-Real & Associated as a recommended and notable firm in “copyright & related rights” (2019), “patent prosecution” (2019), “trademark prosecution” (2020) and "trademark contentious“ (2020). On an individual level MIP IP STARS distinguished João Luís Garcia and António Corte-Real for patent and trademark work.
IP STARS is the leading specialist guide to IP law firms and practitioners worldwide. Managing IP published its first legal directory in 1994 and rebranded it in 2013 as IP STARS. The research for IP STARS covers a variety of IP practice areas and more than 70 jurisdictions, making it one of the most comprehensive and widely respected guides in the IP profession.
The Decree Law 16/2020 published on 15 April 2020, established that all acts at the Industrial Property Office must be submitted exclusively through the online services.
In result of this limitation, the time limits for any acts near the IP Office that were suspended due to the Law 1-A/2020 of 19 March 2020, will resume its normal counting.
This in fact is a consequence of Law 4-A/2020 of 6 April 2020, which determined that the time limits concerning the acts performed exclusively online at the PTO would not be suspended.
In response to the Covid-19 pandemic the Portuguese Parliament and Government have adopted a number of exceptional and transitional measures. Initially the time limits at the Portuguese IP Office were suspended together with other “administrative deadlines” and court proceedings deadlines (article 7 of Law 1-A/2020).
However by mid-April the Government considered desirable that, despite all existing limitations, the economy continues to function, as far as possible, by the practice of acts at a distance. Consequently it was decided (i) to limit the filing of procedures at the IP Office to electronic means only, until 30 June 2020 and (ii) revoke the suspension of deadlines.
The IP Office has made available in its website a few FAQ (in Portuguese only) about the suspension of time limits in the IP procedures.
According to the IP Office interpretation, the time limits were suspended between 12 March and 15 April 2020 and have resumed counting on 16 April 2020. The calculation of deadlines must bear in mind the suspension period.
Another important change is that as from 16 April 2020 there is no more the possibility to file requests, payment of fees or applications of any kind in paper format. Also notifications of parties in procedures will be made in preference by e-mail.
According to the Decree No. 62/20 published on 4 March 2020 new official fees are applicable in the Angolan Industrial Property Office as from 5 March 2020.
The last amendment of the official fees in Angola had been made in 1997. Therefore with the new decree the fees for several actions regarding industrial property rights, namely trademarks, patents, utility models and designs are substantially increased.
Furthermore the new table of fees published by the Decree No. 62/20 simplifies the calculation of the relevant items e.g. the fee for trademark registration is a single fee instead of a group of fees (application fee, request fee, publication fee, etc.).
In the field of patents new fees were adopted for claims over 15 representative and for anticipation or postponement of publication.
The Covid-19 pandemic is having disrupting effects all over the world and has also taken its toll on IP matters. Below is the situation in the main IP agencies and offices as of today.
Portuguese Industrial Property Office (INPI)
The Portuguese INPI remains fully operational. INPI has implemented a contingency plan:
- Workers operate from home as from March 16, whenever the specifics of their functions so allow.
- Travels to international meetings, as well as participations in national events and meetings, are cancelled, and all professional contacts restricted to the absolutely necessary.
- Preference will be given to online customer service, with on-site services being subject to previous scheduling, and available only where online, email or phone support is not possible/sufficient. On the other hand, INPI has simplified access to its online services, by abolishing the requirement for a digital signature in some acts.
Meanwhile the Law 1-A/2020 published on 19 March established that the “administrative time limits running in the interest of a party” are suspended. The Portuguese Office considers that this suspension rule is applicable to the Office however it is not yet clear which are time limits covered by the suspension.
European Union Intellectual Property Office (EUIPO)
Considering the situation in Spain, all EUIPO’s workers are working from home as from March, 16.
All time limits expiring between 9 March 2020 and 30 April 2020 have been extended until 1 May (in practice 4 May, since 1 May is a public holiday, followed by a weekend). This rule encompasses all procedural deadlines before the EUIPO, irrespective of whether they have been set by the Office or are statutory in nature. The extension does not, however, apply to time limits that relate to proceedings before other authorities, even if mentioned in the Regulations (for example, the time limit to bringing an action before the General Court against decisions of the Boards of Appeal).
European Patent Office (EPO)
The European Patent Office has also taken measures to safeguard users’ rights, in a time when many of its workers have already switched to working from home.
In this regard, all time limits expiring on or after 15 March 2020 are extended until 17 April 2020. As regards time limits expiring before 15 March 2020, the Office has facilitated the use of legal remedies for users located in areas directly affected by disruptions due to the COVID-19 outbreak.
All oral proceedings scheduled until 17 April 2020 before the Examination and Opposition Divisions are postponed until further notice, unless they have already been confirmed to take place by videoconference. As to the oral proceedings before the Boards of Appeal, they will not be held either, with the parties being contacted accordingly. The European Qualifying Examination has also been cancelled until further notice.
In accordance with the recommendations and decisions of the Portuguese government in order to reduce the impact of the COVID-19 outbreak, we have taken appropriate measures to ensure that our firm moves to remote operations.
With our team at Simões Garcia Corte-Real & Associados working from home, we remain fully operational and committed to maintaining a high-quality customer service and to handling all our clients’ matters, as smoothly as always.
Our hearts are with all those more seriously affected by the pandemic and also with everyone – health professionals, security forces and other essential workers – that is still working out there to ensure a modicum of normalcy in our lives during these troubled times.
The SGCR Team
The international specialized magazine World Trademark Review has given its maximum classification ranking WTR 1000 to Simões, Garcia, Corte-Real & Associados in 2020.
The firm is “highly recommended on both sides of the contentious/non-contentious divide”. Individually, João Luís Garcia and António Corte-Real were distinguished as 2020 recommended trademark experts from Portugal.
The WTR 1000 research directory focuses exclusively on trademark practices and practitioners and seeks to identify the leading national and international trademark practitioners from around the globe.
In the aftermath of Brexit, the Court of Justice of the European Union gave still binding and very important answers on trademark law to the High Court of Justice (England & Wales), Chancery Division in its recent judgment of 29 January 2020 (case C-371/18, Sky v. SkyKick).
Essentially the English court asked the CJEU the following questions:
- Whether a Community trade mark or a national trade mark may be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that mark was registered are lacking in clarity and precision.
- Whether a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith.
The questions concern the interpretation of provisions of Regulation No 40/94, and of First Directive 89/104 which have been repealed and replaced (by Regulation No Regulation (EU) 2017/1001 and Directive 2008/95/EC) but remain essentially the same.
Unclear or imprecise terms
The first question revisits an uncertainty that has remained at least since 2012 when the CJEU held that the goods and services for which the protection of the trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark (IP TRANSLATOR, case C-307/10).
On that occasion the CJEU said, in short, that clarity and precision was needed in the identification of products or services but neither the Trade Mark Directive or the Community Trade Mark Regulation provided for the invalidity of a trade mark in such a circumstance, nor did the CJEU clarify whether the lack of such requirements would render the mark invalid.
The truth is that the CJEU’s response could potentially imply that thousands of trade marks that have been registered in the European Union with unclear or imprecise descriptions were now subject to an invalidation claim. Descriptions such as "software" that for many years were accepted in the EU, namely by the EUIPO, in contrast with the practice in the US, where it is not possible to register a trade mark for software without adding a specification ("word processing software", for example).
Rejecting the Advocate General Evgeni Tanchev's suggestion that such marks would be entirely or partially invalid for infringing “public policy”, the CJEU concluded that the lack of clarity and precision in identifying products and services is not a ground for invalidity. A bit surprisingly though the CJEU did not find any other negative consequence to the irregular identification of the products or services. The CJEU pointed out merely that such irregular marks would be subject to revocation, in whole or in part, due to non-use during five consecutive years, in fact like all the other regular trade marks.
The CJEU recalled that the concept of “bad faith” is an autonomous concept of EU law and that bad faith in the course of trade does not always presuppose a dishonest intention.
There will be bad faith if there is an intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, but also if the intention is to obtain an exclusive right for purposes other than those included in the essential functions of a trade mark.
The Court said that there may be bad faith in this latter sense if the applicant has filed the application without any intention to use it in relation to the goods and services and there is no rationale for the application. In this case there will be, as AG Tanchev said, an “abuse of the trademark system”.
The abuse must be apparent from "from relevant and consistent indicia" and cannot be presumed by the mere finding that, “at the time of filing of the application, the applicant had no economic activity corresponding to the goods and services referred to in that application”.
In order to prevent the risks of spreading the coronavirus and to avoid the concentration of people the Macao SAR Government has taken a measure of dismissal of service for several public services including the Intellectual Property Office in the Economy Services Direction.
Consequently the IP Office of Macao was closed on the days 30 and 31 of January 2020.
Between 3 and 7 February 2020 the services of the Economy Services Direction are suspended including the IP Office (except the filing of applications, including online applications).
The Decree-Law No. 171/2019 published on 12 December 2019, amends the legal protection regime for Olympic and Paralympic symbols in Portugal.
The main objective of the new legislation is to update the regime that was in force since 2012 and adapt it to the new Industrial Property Code, approved by Decree-Law No. 110/2018, on 10 December 2018.
In addition to the “Olympic properties” (for example, the five Olympic rings or the word “Olympic”), and similar symbols (for example, the expression “Olympic Games”) the new law identifies the “Paralympic properties” (for example the motto “Sprint in Motion”) and similar symbols (for example, “Paralympic Games”).
All of these symbols should be considered “signs with a high symbolic value” for the purposes of refusal or invalidation of trademark rights or design rights under the new Industrial Property Code.
The Industrial Property Office must refuse registration of any trademark, logo or any design or model that contains, in all or some of its elements, such protected signs or any signs similar to these, regardless of the products or services to be covered or the activity of the entities to be distinguished. The same applies to the registration of company names by the RNPC (National Register of Legal Persons).
The new law came into force on December 13, 2019.
On 11 December 2019 the newly created IP Section of the Lisbon Court of Appeals has issued a judgement accepting that the Office decisions to suspend examination may be appealed.
It is the first time that a decision of the CoA is issued on this specific matter. The suspension decisions of the Office were the topic of a round table conversation with several IP professionals promoted by the INPI on 4 December 2019 (Conversas Com).
According to the Industrial Property Code the INPI may suspend examination or opposition proceedings ex officio or at the request of one party by reason of a “prejudicial cause”.
In this case INPI had decided to suspend examination of a trademark application until the final decision of an appeal filed by a third party in a parallel case of the same applicant. The applicant appealed.
The 1st instance Intellectual Property Court rejected admission of the appeal considering that the suspension decision merely affects an application and does not “grant, refuse, modify or affect any industrial property rights”.
The Court of Appeal revoked the IP Court understanding considering that:
- an application for registration has some legal effects, namely the provisional protection conferred from the date of publication in the IP Bulletin: consequently the suspension may affect an industrial property right in constituendo;
- suspending a case is not innocuous; “often not deciding is more damaging than denying a claim”.