PORTUGAL Law and Practice Contributed by: Ana Rita Paínho, Mariana Costa Pinto and Leonor Ruano Silveira, SÉRVULO
Infringement proceedings take place before the Intellectual Property Court, while revocation cases are typically handled by the INPI, except in the specific circumstances mentioned above. Since revocation proceedings at the INPI follow a more streamlined administrative process and do not require an oral hearing, they generally reach a final decision more quickly than court- based infringement cases. 5.8 Measures to Address Fraud There are no specific procedures exclusively for revoking or cancelling trade marks obtained through fraud. However, a trade mark registered fraudulently is considered to have been filed in bad faith, which is a recognised legal ground for trade mark cancellation under Portuguese law. Also, specific dispositions are foreseen for applications on trade marks by franchisees that include possibility of annulment of registration or reversion to the franchisor. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions The assignment of trade mark rights must be done in writing and requires registration with the INPI to be enforceable against third parties. The transfer can be total or partial, meaning it may apply to all or only some of the goods or ser - vices covered by the trade mark. However, if the trade mark includes a personal name, company name or trade name, a specific clause is required in the assignment agreement for it to be valid. Trade mark rights are transmissible upon death, meaning heirs can inherit them, unless otherwise stipulated. Copyrights can also be transferred either wholly or partially, covering specific forms of use des -
ignated in the contract. Unlike trade marks, copyright transfers do not require registration but must be in writing. A partial transfer must clearly define the rights granted, their duration, location and price, and requires notarised signa - tures. If the transfer is temporary and no duration is specified, the law presumes a maximum of 25 years, or ten years for photographic or applied art works. A total and permanent transfer of eco - nomic rights is only valid if done through a public deed. However, moral rights (such as the right to be credited as the author) cannot be transferred and always remain with the original creator. Cop - yrights are transmissible upon death, passing to Trade mark rights can be licensed in full or in part, either exclusively or non-exclusively, for a specific region or the entire country, and for any duration up to the validity of the trade mark. Unless otherwise stated, a licence is presumed to be non-exclusive. An exclusive licence pre - vents the trade mark owner from granting further licences but does not stop them from using the trade mark themselves unless explicitly agreed. The licence agreement must be in writing and, while registration at the INPI is not mandatory, it ensures legal enforceability against third parties. A licensee may not transfer their rights without the trade mark owner’s consent, and sublicens - ing is only permitted if explicitly allowed in the contract. Otherwise, sublicensing can only be made with the trade mark owner’s written con - sent. heirs under the same conditions. 6.2 Licensing Requirements or Restrictions As for copyright, authors and their successors may authorise third parties to use, publish or dis - tribute their work, but such authorisation does not constitute a transfer of ownership. Copyright licences must be in writing and specify the per -
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