PORTUGAL Law and Practice Contributed by: Ana Rita Paínho, Mariana Costa Pinto and Leonor Ruano Silveira, SÉRVULO
2.3 Trade Mark Rights Trade mark owners in Portugal are granted exclusive rights over their registered marks, as outlined in the Industrial Property Code. These rights include the following. • Exclusive use: the owner has the sole right to use the mark for the designated goods and services. • Right to prevent use by third parties: unau - thorised use of identical or confusingly similar marks for identical or related goods/services can be prohibited. • Right to oppose and invalidate: the owner may oppose conflicting applications and seek invalidation of infringing registrations. • Right to license and transfer: the trade mark can be licensed or assigned to third parties. • Right to take legal action: owners can enforce their rights through civil and criminal proceed - ings against infringement or counterfeiting. These rights persist for the duration of the reg - istration, typically ten years, and are renew - able indefinitely. However, they may be lost if the trade mark is not genuinely used within five consecutive years, becomes generic or is invali - dated due to legal grounds. 2.4 Use in Commerce To prove trade mark use, it must be shown that the defendant has used the sign as a trade mark and not in a purely descriptive manner. The use must be genuine, not token, symbolic or solely for maintaining registration, and it should be in the registered form or in a variation that does not alter its distinctive character. Genuine use is assessed based on actual commercial exploi - tation of the mark for the registered goods or services. The mark must be used within Portugal or the EU (for EU trade marks) and must estab - lish a presence in the relevant market. Use must
marks that could create confusion or association with the original owner. This applies to both iden - tical and related goods/services. As for prestig - ious marks, even if a mark is used for unrelated products or services, it cannot be registered if it takes unfair advantage of or harms the distinc - tive character or reputation of a prestigious mark previously registered in Portugal or the EU. Foreign well-known marks can also be protected in Portugal under Article 6 bis of the Paris Con - vention, provided they meet the criteria of noto - riety in the country. 2.2 Essential Elements of Trade Mark Protection To qualify for trade mark protection in Portugal, a sign must be distinctive, capable of graphical representation or one which allows the determi - nation of the protection granted and does not fall under any grounds for refusal. It should be possible to differentiate the goods or services of one entity from those of another. Acquired distinctiveness or secondary meaning can be proven if a mark, despite lacking inher - ent distinctiveness, has become recognisable through continuous and extensive use in com - merce. Factors considered include: • duration, extent and geographical scope of use; • market share and sales volume under the mark; • advertising and promotional efforts; • consumer surveys and evidence of recogni - tion; and • judicial or administrative decisions recognis - ing the mark’s distinctiveness. If proven, a mark that was originally non-distinc - tive may be granted registration.
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