PORTUGAL Law and Practice Contributed by: Ana Rita Paínho, Mariana Costa Pinto and Leonor Ruano Silveira, SÉRVULO
A trade mark cancellation request may be filed at any time during the trade mark’s validity, where - as a revocation action must be initiated within five years from the date of the granting decision of the trade mark in question. The owner of an earlier trade mark loses the right to seek the invalidation of a later trade mark reg - istration if it is proven that they have knowingly tolerated the coexistence of both marks for five consecutive years after becoming aware of the later registration. In such cases, their right to challenge the mark is barred by the principle of tolerance. 5.2 Legal Grounds for Filing an Opposition or Cancellation Common grounds for opposition include the likelihood of confusion with an earlier trade mark, bad faith registration and unfair competi - tion. Notwithstanding, an opposition may also be based on any of the refusal grounds recog - nised by the IP Office and can extend beyond trade marks to include other prior rights, such as geographical indications, trade names, com - pany names, copyrights and other intellectual property rights. A trade mark cancellation may be based on absolute grounds for refusal, such as the lack of distinctive character or the inclusion of unlawful or immoral elements. If a trade mark was grant - ed despite failing to meet these fundamental requirements, it may be subject to cancellation. A trade mark may be revoked on many of the same grounds as an opposition, including the imitation of a prior trade mark for identical or similar goods or services where there is a like - lihood of confusion. Revocation may also be sought if the registered trade mark violates earli - er intellectual property rights or copies or mimics
a particular trade dress or label already used in prior trade marks. Additionally, the unauthorised reproduction of a well-known (notorious) trade mark can also justify revocation. Furthermore, the trade mark is subject to expira - tion (termination) in cases where: • the renewal fees have not been paid; • the trade mark has not been seriously used for a continuous period of five years for the goods or services it was registered for, with - out a valid justification; • the trade mark has become the generic des - ignation in commerce for the relevant goods or services due to the way it has been used by its owner; or • the trade mark has become misleading to the public regarding the nature, quality or origin of the goods or services. 5.3 Ability to File an Opposition or Revocation/Cancellation Oppositions and revocation/cancellation pro - ceedings may be initiated by any interested party who can substantiate how they would be harmed if the contested trade mark were grant - ed or maintained. This includes, for example, the owner of a prior trade mark that could be infringed by the later registration (or, in the case of revocation, is already being infringed). Oppositions may be filed directly by the oppo - nent without the need for legal representation. However, revocation and cancellation proceed - ings must be submitted through a qualified rep - resentative, such as an Industrial Property Offi - cial Agent, an attorney or a solicitor. The current official fees set by the Industrial Prop - erty Office for filing an opposition are EUR61.51 for online submissions and EUR123.02 for paper
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