PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
2.3 Trade Mark Rights According to the Portuguese Industrial Property Code, the main trade mark right arising from registration is to prevent third parties, without the owner’s consent, from using, in the exercise of economic activities, any sign if: • that sign is identical to the trade mark and is used in relation to goods or services identical to the goods or services covered by the registration; • that sign is identical to the trade mark and is used in relation to goods or services similar to the goods or services covered by the registration, or if that sign is similar to the trade mark and is used in relation to goods or services identical or similar to the goods or services covered by the registration, if there is a risk of confusion or association in the mind of the consumer; and • that sign is identical or similar to the trade mark and is used in relation to goods or services cov - ered or not by the registration, if the trade mark enjoys reputation in Portugal or in the European Union, if it is a European Union trade mark, and the use of the sign unduly takes advantage of the distinctive character or prestige of the trade mark or may harm them. The following use is specifically prohibited: • affixing the sign to goods, their packaging or other means by which they are presented; • offering of goods for sale bearing the sign, as well as their placing on the market or storage for that purpose, or the offering or provision of services bearing the sign; • importing or exporting goods bearing the sign; • using the sign, in whole or in part, as a company name or business name or as a characteristic part of that company name or business name; • use of the sign in commercial documents and in advertising; and • use of the mark in comparative advertising when it contravenes current advertising legislation. 2.4 Use in Commerce To avoid being subject to cancellation or not being enforceable for non-use, a registered trade mark must have been put to genuine use in the five years prior
or a sign or set of signs that can be represented in such a way as to allow the object of the protection conferred on its holder to be determined clearly and precisely, provided that they are suitable for distinguishing the products or services of one company from those of other companies. Trade marks that are registered in other countries that are well-known in Portugal are protected, even if not registered in Portugal. • Logotypes (identifies an entity which commercial - ises goods and/or provides services, and not the goods and services themselves). • Appellations of origin, geographical indications and traditional speciality guarantees. • Rewards (includes awards for merit bestowed by the Portuguese State or by foreign countries; medals, diplomas and monetary prizes or prizes of any other nature obtained at expositions, fairs and contests that are official or officially recognised, held in Portugal or in foreign countries; diplomas and certifications of analysis or praise, issued by laboratories or State services or organisations qualified for such purposes; titles of supplier of the Head of State, government and other entities or official establishments, national or foreign; all other prizes or official demonstrations of preference). • Hallmarks. 2.2 Essential Elements of Trade Mark Protection There are two main absolute requirements for a sign to qualify for trade mark protection: (i) capability of being represented in such a way as to allow the object of the protection conferred on its holder to be determined clearly and precisely (sufficient representation), and (ii) ability for distinguishing the products or services of one company from those of other companies (dis - tinctiveness). An intrinsically non-distinctive sign may be protected if it acquires distinctiveness, ie, if it ceases to be, in the perception of the relevant public, an indication of the type or characteristics of a good or service, and becomes an indication of the commercial origin of goods and services, considering factors such as the market share of the goods and service provided under the relevant sign, the duration, frequency and geographical reach of its use, among others.
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