PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Portugal has a specialised court for these matters. While the judges assigned to the Intellectual Prop - erty Court may possess high-level specialisation in IP law, they are not technical officers. Consequently, the assessment of complex technical or scientific mat - ters is addressed through expert evidence, where the court appoints independent experts to provide tech - nical reports. However, the judge retains full sover - eignty over the final decision under the principle of free assessment of evidence. Crucially, parties are strictly precluded from influencing the selection of the decision-maker. Case assignment is governed by a mandatory electronic distribution system to ensure randomness and compliance with the constitutional principle of the “Natural Judge.” 8.2 Effect of Registration Registration confers a legal presumption of validity and ownership (iuris tantum). Under Article 4 of the Industrial Property Code, the registered proprietor is presumed to be the legitimate owner of the right, shift - ing the burden of proof to the defendant to demon - strate otherwise. Furthermore, the defence of acquiescence limits challenges over time. If a trade mark owner know - ingly tolerates the use of a later registered mark for five consecutive years, they are statutorily barred from seeking its annulment or opposing its use. For the alleged infringer to use the mark for the identi - cal goods or services listed in the registration. While “double identity” constitutes automatic infringement, liability also arises where the use covers similar goods or services, provided there is a likelihood of confu - sion, including a risk of association, on the part of the public. Moreover, for trade marks with a reputation in Portugal, protection extends even to dissimilar goods or services, if the use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.
8.3 Costs of Litigating Infringement Actions Undoubtedly, legal fees constitute the most significant and variable cost component. While court fees remain fixed and predictable based on the statutory claim value, professional fees fluctuate directly with the pro - cedural intensity of the case. The volume of pleadings, the filing of interlocutory motions, and the duration of trial hearings significantly escalate these costs. Fur - thermore, since the recovery of legal fees from the losing party is statutorily capped, the financial burden of a protracted litigation falls disproportionately on the claimant, regardless of the final outcome. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Defences against infringement in Portugal are strictly statutory. For copyright, often acting as total bars to liability if successfully proven. For trade marks, the primary defences include invalidity of the plaintiff’s mark, like registered in bad faith or lacking distinc - tiveness, forfeiture due to non-use under Article 268 of the Code of Industrial Property, and acquiescence, which bars the owner from challenging a later regis - tered mark if they have knowingly tolerated its use for five years, under Article 261 of the Code. While there is no “open” fair use doctrine analogous to the US system, Portuguese law provides a non- exclusive list of statutory exceptions, which explicitly includes parody, caricature, and pastiche and private use. For trade marks, defences include the use of one’s own name, strictly for natural persons and in accordance with honest practices, and the exhaus - tion of rights. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) As stated in 9.1 Defences to Trade Mark Infringe- ment , Portugal does not recognise a general, open- ended “fair use” doctrine similar to the one found in the United States. Instead, the legal system operates on a list of specifically defined statutory exceptions, legally termed as free uses, which allow for the unau - thorised use of copyrighted works for precise pur - poses such as private copying, educational use, and
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