PORTUGAL Law and Practice Contributed by: Vítor Palmela Fidalgo, João Pereira Cabral and Diogo Antunes, Inventa
reparable, or that the claimant delayed unreasonably in bringing the action thereby negating the alleged urgency. 10.2 Monetary Remedies The need to compensate the right holder for the infringement of trade mark rights is governed by Arti - cle 347 of the Industrial Property Code. It is applica - ble in cases of intentional or negligent infringement (paragraph 1). As a consequence of the transposition of the EU Enforcement Directive, Portuguese law stipulates that, in assessing the quantum of damages, elements beyond actual loss and loss of profit (paragraph 2), as well as beyond moral damages (paragraph 4), must likewise be taken into consideration. Consideration must additionally be given to the profits obtained by the infringer and to the expenses incurred with the protection, investigation and cessation of the infringing conduct (paragraph 2). Paragraph 3 further states that regard should be had to the significance of the revenue generated by the infringer’s unlawful conduct, a criterion that is largely redundant in light of the reference to the profits obtained by the infringer in the preceding paragraph. Paragraph 5 provides that, where it is not possible to determine the amount of the damage actually suffered by the injured party, and provided that the latter does not object, the court may, on the basis of equity, set a lump-sum amount which shall be not less than the remuneration that would have been payable had the infringer requested authorisation to use the industrial property rights or trade secrets at issue ( Lizenzanalo- gie ). To this amount must be added the expenses incurred in protecting the right, as well as those arising from the investigation and cessation of the infringing con - duct. Contrary to the Enforcement Directive, the Por - tuguese legislature characterises this criterion as an “alternative” method. An interpretation consistent with the Directive must, however, be adopted, according to which the damages in question constitute a “subsidi - ary” method, to be employed only where it is impos - sible to determine the actual amount of harm suffered
by the injured party, and provided that the latter does not object. Additionally, under paragraph 6, where the infringer’s conduct amounts to a repeated practice in relation to the injured party or proves particularly serious, the court may determine the damages owed by cumula - tively applying all or some of the criteria set out in the provision. This rule is not contained in the Enforce - ment Directive and has prompted significant debate in Portuguese scholarship. Several authors argue that it should not be applied, on the ground that it is incom - patible with the Directive and departs from the national legal tradition governing damages for the infringement of industrial property rights or trade secrets, in so far as it appears to introduce punitive damages. Contrary to the objective of the Enforcement Directive, certain case law has downplayed the significance of the enhanced protection afforded to industrial prop - erty rights through the specific rules established for that purpose. In this regard, reference may be made, for example, to a judgment of the Porto Court of Appeal, which states that these rules amount to “a regime that is different from, or more generous than, the general rules governing compensation set out in Articles 562 et seq. of the Civil Code.” The judgment further adds that “what may be understood is that this is a more detailed provision, which supplies addi - tional criteria for operationalising the so-called theory of difference, with the aim of avoiding compensations that are unsatisfactory and that do not contribute to the effective protection of intellectual and industrial property rights”. Judges exercise significant discretion, particularly when resorting to equity to fix global sums where precise quantification is impossible. The overarch - ing goal, derived from the Enforcement Directive, is to ensure remedies are effective, proportionate, and dissuasive. 10.3 Attorneys’ Fees and Costs The allocation of costs follows the “loser pays” prin - ciple, enshrined in Article 527 of the Civil Procedure Code. The party that loses the lawsuit is responsible for paying the court fees and must reimburse the pre - vailing party for their litigation expenses. This reim -
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