TRADEMARKS FILING AND PROSECUTION IN PORTUGAL
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the INPI (Portuguese Institute of Industrial Property), such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a brand or other sign used in commerce, it is necessary to register it with the INPI. Only the National Institute of Industrial Property can guarantee the right to exclusive use of a trademark or other signs used in trade.
Trademark in Portugal may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
| Relevant office | National Institute of Industrial Property (INPI) |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing, publication, examination, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark Search in Portugal
Trademark Search in Portugal can be conducted through INPI’s website by name, phonetic, application number, by applicant/owner, by product or service and by unconventional trademarks. Search can also be conducted for images and for integrated trademark and domain name search.
It is advisable to conduct a trademark search prior to filing of a trademark application in order to ascertain the availability of trademarks, existence of prior identical/similar/ deceptively marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
Additionally is advisable to conduct comprehensive trademark clearance search to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Filing trademark applications in Portugal
A trademark application in Portugal can be filed for trademarks, logos, collective association or certification trademarks or guarantee marks, appellations of origin, geographical indications and rewards.
To register a trademark with the INPI, the application for trademark registration may be submitted by the interested party himself or by a representative, that is, an official industrial property agent (AOPI) , lawyer, solicitor, authorized attorney or any other representative as designated by applicant.
Trademarks that cannot be registered in Portugal
The INPI provides that following kinds of trademarks cannot be registered in Portugal:
(i) are already registered;
(ii) mislead the consumer;
(iii) only consist of words that describe the characteristics of the products or services, or of terms that are common in commercial language;
(iv) use expressions or words contrary to morals and good customs;
(v) violate third party rights or favor unfair competition;
(vi) contain State symbols, emblems of national or foreign public entities, coats of arms, names or portraits of people, without authorization from the persons or entities to which these symbols belong;
(vii) contain signs with high symbolic value (for example, religious symbols), except when these are usually used in current language or in commerce and are accompanied by other elements that make the sign distinctive.
A trademark registered in Portugal and provided protection by Portugal is valid in Portugal only.
Trademark Renewal in Portugal
A trademark once registered in Portugal is valid for 10 years from the date of submission of the application i.e. date of filing. In order to renew the mark, renewal is to be filed within the last 6 months of validity. For more information on trademark renewal, click here.
As provided by the Industrial Property Code of Portugal, the time limit for filing an opposition is two months from the publication of the application in the Industrial Property Bulletin, which is extendible by one month[1].
The Applicant is required to file their counter statement within two months, which is also extendible by one month.
Article 227 of the Industrial Property Code states that where an opposition has been filed on the basis of a prior trade mark which has been registered for at least 5 years, the Applicant may use the opposition to request the Oponent to submit proof that the prior registration has been used in a consecutive period of 5 years prior to the Applicant’s filing date / claimed priority, or if there was a justifiable reason for non-use. After being notified of the same, the Opponent has to prove use of its prior registration within one month, which is extendible by one month, and if the Opponent fails to do so, the opposition will be refused[2].
[1] https://www.country-index.com/country_surveys.aspx?ID=62