PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
• likelihood of confusion with an earlier protected designation of origin or geographical indication; • infringement of other industrial property rights; • the use of names, portraits or any expression or characterisation, without authorisation from the person in question; • unfair competition; • likelihood of confusion with earlier company names and other distinctive signs; • copyright infringement; • the application having been filed by an unlawful agent; and • the likelihood of confusion with a well-known trade mark with an existing reputation. These are also the grounds for annulment applica - tions, with the exception of unfair competition. Applications for the declaration of nullity can be based on any absolute grounds, as described in 4.10 Refusal of Registration and on bad faith. 5.3 Ability to File an Opposition or Revocation/Cancellation Oppositions and cancellation actions can be filed by anyone who may be affected by the eventual grant - ing of a registration, based on the absolute or relative grounds for refusal indicated in 4.10 Refusal of Reg- istration and 5.2 Legal Grounds for Filing an Oppo- sition , including owners or licensees of prior rights. Professional representation is not required. The INPI’s fees for oppositions and for cancellations for non-use are EUR62.83. For annulment applica - tions and applications for the declaration of nullity the INPI’s fees are of EUR233.51. Attorneys’ fees may range between EUR500 and EUR1,300. 5.4 Opposition or Revocation/Cancellation Procedure Opposition is filed within two months of the publi - cation of the application. Upon notification of the opposition, the applicant may file a counterstatement within two months. The applicant can request that the opponent provide evidence of using the signs that are the object of the earlier rights. If the applicant fails
to provide sufficient evidence, the opposition will be deemed unfounded. Until a final decision is issued by the Office, any party can file additional arguments. The invalidity application (for annulment or for decla - ration of nullity) is filed before the Office. The owner of the registration which is subject to the invalidation request is notified and can file a response within two months. The Office then issues a decision. A proce - dure regarding proof of trade mark use similar to that described for oppositions is applicable. Cancellation actions for non-use can be filed before the INPI at any time (five years after registration). The owner of the registration is notified to file proof of use within a month. Partial cancellation and revocation are possible. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Appeals against all INPI’s decisions can be filed before the Portuguese IP Court. These decisions can also be appealed against before the INPI, except for decisions in actions for annulment and for the declaration of nullity, which can only be appealed against before the IP Court. 5.6 Amendment in Revocation/Cancellation Proceedings The trade mark owners can surrender their registra - tions, partially or totally, during the proceedings. 5.7 Combining Revocation/Cancellation and Infringement Actions for revocation/cancellation are handled by the INPI while infringement actions are handled by the IP Court. However, the defendant in an infringement action can request the revocation/cancellation as a defence. 5.8 Measures to Address Fraud Any fraudulent trade mark filing is treated under the absolute ground for refusal on the basis of “bad faith”.
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