PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark Registration Assignment
Licences may be perpetual if expressly agreed, though courts interpret perpetual exclusivity narrowly to pre - serve the author’s freedom. They may also include archival, digital, or derivative-use rights, provided these are specifically mentioned in the contract. 6.3 Registration or Recording of an Assignment or Licence Trade Mark To be legally enforceable against third parties, licenc - es must be registered with the INPI. Copyright Assignments and licences of copyright do not require registration. These contracts must be in writing but are effective upon execution, with no administrative filing needed. A voluntary record may be made with the IGAC, serv - ing as evidence of authorship or transfer, but registra - tion is not constitutive of rights. Accordingly, there is no legal risk of loss of priority during any gap period, since ownership and licensing are effective immediately upon agreement. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits In Portugal, infringement claims are subject to spe - cific statutory deadlines rather than a single general statute of limitations. Claims for financial compensa - tion, regarding both trade marks and copyright, must generally be brought within three years from the date the rights holder becomes aware of the infringement, according to the Civil Code, Article 498. However, if the infringement constitutes a crime (eg, counterfeit - ing), this limitation period is extended to match the criminal statute of limitations, which is often longer. Regarding equitable defences similar to laches, Por - tuguese law enforces a five-year period of “acquies - cence”. If a trade mark holder knowingly tolerates the use of a later registered mark for five consecu - tive years, they lose the right to challenge it, under
Trade mark assignments must be executed in writing and, to be legally enforceable against third parties, registered with the INPI. They may be total or partial. If the trade mark incorporates a personal, company, or trade name, the assignment agreement must include a specific authorising clause to be valid. Assignment of Copyright Under the Copyright Code, economic rights may be assigned wholly or partially, provided the assignment is in writing. Moral rights, however, are inalienable and non-transferable. No registration or approval is required, but assignments must clearly define the scope, duration, and purpose of the transfer. The author’s economic rights pass to their heirs and remain valid for 70 years after death, while moral rights continue perpetually, exercised first by the heirs and later by the State. 6.2 Licensing Requirements or Restrictions Trade Mark Licensing Trade mark registrations may be subject to an operat - ing licence, in whole or in part, free of charge or for a fee, in a specific zone or throughout the national territory, for the entire duration of their operation or for a shorter period, and can be applied to trade mark applications, and must be in written form and, to be legally enforceable against third parties, registered with the INPI. Copyright Licensing Under the Copyright Code, licences must be in writing and clearly specify their scope, duration, and purpose. No registration or administrative approval is required. Copyright licences may be: • exclusive – granting the licensee the sole right to use the work within the agreed scope; or • non-exclusive – allowing the author to license the same rights to others.
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