PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
Copyright While the Code of Copyright and Related Rights does not provide a single “test” like the trade mark likeli - hood of confusion, the factors are established across specific articles defining exclusive rights and excep - tions. Under Article 68, the primary factor is whether the defendant’s conduct falls within the exclusive rights reserved for the author, such as reproduction, distribu - tion, or communication to the public. If the act fits one of these legal definitions and was performed without authorisation, it is effectively an infringement. The “Three-Step Test”, established in Article 75, No 4 of the Code of Copyright and Related Rights, states that if the defendant claims their use is permitted under an exception, the court applies a statutory bal - ancing test. 7.4 Prerequisites and Restrictions to Filing a Lawsuit In certain cases, sending a cease-and-desist letter to the infringer prior to the initiation of judicial proceed - ings may prove useful. However, such prior commu - nication does not constitute a mandatory requirement under Portuguese law. The decision as to whether a warning letter should be sent to the potential defend - ant is assessed on a case-by-case basis. Regarding other prerequisites, for trade marks, in most cases, a registration is a mandatory prerequisite for filing a standard infringement lawsuit, as the Portuguese system is heavily registration-based and mere use generally does not grant standing to sue. Conversely, copyright enforcement does not require prior registra - tion, though the claimant bears the burden of prov - ing authorship. Additionally, there is no mandatory requirement to engage in mediation or arbitration before filing a claim. 7.5 Lawsuit Procedure Proceedings can be initiated before the Intellectual Property Court. Court fees vary depending on the value of the claim and are typically lower in preliminary measures.
the Industrial Property Code, Article 261. Additionally, excessive delays in enforcing rights generally can be dismissed by courts under the doctrine of “Abuse of Right” (Civil Code, Article 334), if the delay created a legitimate expectation that no legal action would be taken. 7.2 Legal Claims for Infringement Lawsuits and Their Standards In the event of an infringement, the proprietor of a trade mark or copyright right (or of any other industrial property right or trade secret) has access to a diverse range of remedies, provided both under the Industrial Property Code, the Copyright Code and general civil law. In the civil sphere, these remedies include, inter alia, injunctive actions ‒ aimed at bringing the unlawful acts to an end and preventing their recurrence ‒, civil liabil - ity claims, seeking compensation for both pecuniary and non-pecuniary damage arising from the infringe - ment of the exclusive right, as well as measures for obtaining and preserving evidence and accessing information. Depending on the procedural strategy adopted by the injured party, such measures may be accompanied or preceded by interim measures intended to secure the practical effectiveness of judicial protection, notably through the seizure of products, the preservation of evidence, or the immediate suspension of the infring - ing acts. In addition to civil remedies, criminal or administrative liability may also arise where the infringer’s conduct satisfies the relevant statutory elements, particularly in situations involving counterfeiting, usurpation, or repeated violations of industrial property rights. 7.3 Factors in Determining Infringement Trade Marks The factors for determining trade mark infringement are explicitly established in Article 249 of the Industrial Property Code. These statutory provisions mirror the EU Trade Mark Directive. See 7.2 Legal Claims for Infringement Lawsuits and Their Standards .
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