On 10 July 2016 Portugal won the UEFA Euro, the European football championship, by beating France on a famous final in Paris.
The Portuguese have brought home the trophy that was held by Cristiano Ronaldo, and named “Henri Delaunay cup”, in honor to the former president of the French Football Federation and UEFA's first secretary-general.
That was undoubtedly a tasty triumph for the Portuguese represented by a shiny and splendid trophy. However the Henri Delaunay cup is not an original work deserving protection by copyright at least that is what the US Copyright Office just decided.
In 2016 UEFA applied to register the Euro Trophy at the US Copyright Office (USCO). The USCO described the trophy as a "a silver two-handled vase, with a tiered pedestal foot, bulb-shaped body, long neck, and three-tiered lip. The handles are shaped in braids and there is curvilinear engraving on the pedestal, body, and lip”.
The UEFA Euro trophy
After the initial examinations made in 2017, the registration was rejected because the USCO considered that the work “as a whole consists of a standard trophy vase accented with a few bands and twisted handles” and “[t]he very simple combination of elements into an expected configuration given the underlying nature of the work does not exhibit the creativity to support a registration”.
In September 2018 the decision was confirmed by the USCO Board of Review (as reported by the IPKat blog). The Board considered that the overall shape of the work shares common design features with amphora, a standard shape in Greek and Etruscan pottery. The differences introduced, namely the twisted handles, do not reach the minimum of originality required as they are also a familiar feature in Greek pottery (images below).
* ** ** (*) The Metropolitan Museum of Art (**) Musée du Louvre
UEFA cited a number of Office-issued trophy registrations however the USCO rejected the comparison. UEFA also mentioned the opinion in Titlecraft, Inc. v. Nat’l Football League where the court addressed one of the most famous American trophies, the Vince Lombardi trophy awarded by the National Football League to the Super Bowl winner. Given the obvious differences between the objects, the Board had no difficulty in refusing the argument, maintaining that the Euro Cup trophy is not sufficiently creative but rather a standard design based on classical and common works of art.
Under US law, a work may be registered if it qualifies as an “original work of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). The concept of “original” has two aspects, according to the US case law (namely, the Feist case). First of all, the work will have to express an “independent” creation of its author ie it cannot be a copy of other works. In addition, the work must have “enough creativity”, that is, there must satisfy a minimum level of creativity. As the USCO Board noted, some combinations of common or standard design elements may contain sufficient creativity with respect to how they are juxtaposed or arranged to support a copyright. Nevertheless, not every combination or arrangement will be sufficient to meet this test. There will therefore be works not protected because they do not reach this minimum level (in the Feist case, an alphabetical telephone directory was not considered an original work).
The same type of legal issues may be raised under the copyright law of Portugal, and other countries as well. Nevertheless it is quite difficult to anticipate what would be the decision of a Portuguese court if asked to rule on whether or not the Delaunay cup is sufficiently creative to be considered an original work protected by copyright.
Learnings from other intellectual property areas namely, design, trademark and patent law are not helpful here. The novelty and individual character of the trophy design in comparison with the classical vases is not relevant. That the Euro trophy is well-known among football fans or possesses a high distinctive character as symbol of the UEFA Euro tournament might be valuable for trademark law but not for copyright protection. It is neither important that new uses (trophy) for known products (amphora) may generally be protected by a patent. The test of originality can be a subtle one.
The entry into force of Regulation (EU) 2016/679 of 27 April 2016 on the protection of individuals with regard to the processing of personal data and the free movement of such data, the so-called GDPR, has had a very significant impact in the processing of personal data of persons residing in the European Union, including the area of domain name registration services.
Therefore, also in Portugal, the GDPR gave rise to changes in the Registration Rules of .pt domain names, which have been applied since May 25, 2018, which is also the date of entry into force of the GDPR.
The GDPR has reinforced the level of protection of the rights of personal data holders, raising concerns about the possibility that personal data may continue to be made available on the WHOIS service, such data being essential for contact or identification of those responsible for websites, and for the activation of dispute resolution procedures and enforcement of intellectual property rights, namely, in the case of conflicts between domain names and trademark rights.
The recommendations at international level of organizations such as CENTR – Council European National Top – Level Domain Registries and ICANN - Internet Corporation for Assigned Names and Numbers were to maintain the availability of data in the WHOIS system, and the inherent principles of transparency and advertising, as far as possible, matching them, however, with the requirements of the GDPR. In any case, the availability of personal data in the WHOIS .PT service must be based on the informed, free and informed consent of the respective holders. Thus the WHOIS policy rules in the .pt domain are as follows:
Regarding the domain name, the WHOIS publishes the following data
- domain name,
- creation date,
- expiration date,
- server data (name server).
With regard to the registration holder, WHOIS discloses:
- if it is a legal person, the name, address and email of the holder,
- if it is a natural person, the name, address and email address of the holder only if the holder has given consent.
With respect to the managing entity or registrant, the WHOIS discloses:
- if it is a legal person, the name, address and email of the entity,
- if it is a natural person, the name, address and email, only if the latter has given consent.
In the case of natural persons who have not given consent to public disclosure, or who have withdrawn the consent initially provided, it will be possible to contact the holder by means of an "anonymized" email, that is, without the recipient address being displayed.
In addition, judicial authorities, ARBITRARE (arbitration center for intellectual property disputes), entities to which the law assigns powers in the criminal investigation, or whose mission is the supervision and prevention of compliance with the law, in particular, the protection of the rights of consumers, intellectual property, communications, security, public health and commercial practices in general, may request the DNS.PT to access personal data not publicly accessible via WHOIS.
Due to a serious breakdown in the information technology system of the Portuguese IP Office (INPI), no Industrial property Bulletins were published from 13 August 2018 (bulletin No. 155) to 4 September (bulletin No. 170).
The publication was resumed on 5 September (bulletin No. 171) but with limitations as to the amount of published data.
Computer constraints also prevented B2B communications, payments through current accounts, viewing the online state of the acts, as well as the receipt of email messages confirming the reception, by the INPI, of the acts carried out through electronic filing. This last feature (confirmation of acts) was reactivated in early September.
The European Commission has released its latest Communication in order to introduce the work on the preparation for the UK's withdrawal from the European Union (COM(2018) 556 final dated 19-07-2018).
Unless a ratified withdrawal agreement establishes another date or, in accordance with Article 50(3) of the Treaty on European Union, the European Council, in agreement with the United Kingdom, unanimously decides that the Treaties cease to apply at a later date, all Union primary and secondary law will cease to apply to the United Kingdom from 30 March 2019, 00:00 (CET). This is exactly two years after it notified the European Council of its intention to withdraw.
The EC has reminded stakeholders and businesses of seven particular areas that businesses in the EU27 need to consider in order to prepare for Brexit:
1) Preparing in general for the withdrawal is not just a matter for EU and national authorities but also for private parties. All businesses concerned have to prepare, make all necessary decisions, and complete all required administrative actions, before 30 March 2019 in order to avoid disruption.
2) Assess your responsibilities in the supply chain under EU law after Brexit. For example EU27 businesses that buy goods from the UK will be considered as importers for the purposes of EU product legislation, they will have another set of obligations under EU law.
3) If your activity relies on certificates, licenses or authorisations issued by UK authorities or by bodies based in the UK – or held by someone established in the UK – these may no longer be valid in the EU post-Brexit.
4) Doing business with the UK post-Brexit will become more complex in terms of customs and VAT procedures.
5) When exporting products to third countries with which the EU has a Free Trade Agreement, exporters may enjoy a preferential tariff rate if the products have enough «EU content» according to rules of origin.
6) EU rules restrict the import/export of certain goods to and from third countries – for example, live animals, products of animal origin, and some plants and plant products, such as wood packaging. Post-Brexit, goods destined to or coming from the UK will be subject to these EU rules.
7) The transfer of personal data from the EU to the UK is still possible, but it will be subject to specific conditions set in EU law. Companies that are currently transmitting personal data to the UK should be aware that this will become a «transfer» of personal data to a third country. Companies should assess whether, in the absence of an adequacy decision, measures are necessary to ensure that these transfers remain possible.
Specifically in the field of Industrial Property rights the European Commission has issued a notice to stakeholders concerning the withdrawal of the United Kingdom and EU legislation in the field of supplementary protection certificates (SPC) for medicinal products and plant protection products (27 April 2018).
Although there are still considerable uncertainties, in particular concerning the content of a possible withdrawal agreement, there are some automatic legal repercussions in the field of SPCs, which derive from the fact that the UK becomes a third country, namely the following:
1) An authorisation to place the product on the market granted by a UK competent authority as of the withdrawal date [30 March 2019] will not be considered a first authorisation to place the product on the market in the European Union for the purposes of Article 13 of Regulation (EC) No 469/2009 and Article 13 of Regulation (EC) No 1610/96.
2) As of the withdrawal date [30 March 2019], Regulation (EC) No 469/2009 and Regulation (EC) No 1610/96 no longer apply to the United Kingdom (for applications for a supplementary protection certificate submitted before the withdrawal date, the EU is trying to agree solutions with the United Kingdom in the withdrawal agreement).
According to the Decision No. 725/2018 of the Management Board of the IP Office and the Government Regulation No. 1098/2008, new official fees are applicable in the Industrial Property Office of Portugal as from 1 July 2018.
All official fees have been adjusted in accordance with the inflation rate (1,38%). There are no other changes either in structure or level of official fees.
The Portuguese Government has submitted for approval of the Parliament a proposal for a new Industrial Property Code which will repeal and substitute the most important IP law in force.
The current IP Code was adopted in 2003 (Decree Law 36/2003, of 5 March) and amended in 2008 (Decree Law 143/2008, of 25 July). According to its preamble the draft proposal has the following goals:
a) Implementing the recast of the EU trademark directive - Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015;
b) Implementing the EU trade secrets directive - Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016;
c) “Simplifying and clarifying administrative procedures of granting, maintenance and extinction of industrial property rights”;
d) “Adopting mechanisms to strengthen the rights protection system and to give effectiveness to remedies against infringements”.
The law proposal is undergoing the normal legislature procedures in the Parliament’s Committee on Economy, Innovation and Public Works, which include opinions from public and private bodies and associations. However the time available for discussions is apparently too short. The proposal sets 1 July 2018 as the date for entering into force of the new IP Code with regard to the trade secrets provisions, and such date is already in slight delay considering that the deadline for implementing the trade secrets directive is 9 June 2018.
The changes provided for by the proposal are substantial in number and extension and touch upon all industrial property rights chiefly patents, utility models, designs or models, trademarks, geographical indications and appellations of origin besides the rules of trade secrets and enforcement. We will report the amendments at length in a near future. Some of the most noteworthy amendments proposed are the following:
The draft proposal allows for patent ‘double-protection’ (or so-called ‘double-patenting’). The current IP Code prohibits double-protection of the same invention by both a Portuguese national patent (or utility model), and a European patent with effect in Portugal, i.e. a patent obtained by validating an European patent in Portugal after grant by the European Patent Office, if both patents have an identical priority date and originate from the same inventor.
The draft clarifies the scope of patents and provides for new rights against indirect patent infringement. The current IP law foresees no protection against indirect infringement.
The Government drafters propose amending Law 62/2011. The Law 62/2011 is a sui generis law addressing specific industrial property disputes between holders of patents related to medicinal products and companies that produce or distribute generic medicines. The law established a regime of “mandatory arbitration” which has given place to no few controversies. The proposal now submitted to the Parliament revokes the “mandatory” nature of the arbitration. This means in practice that generic companies will not be obliged to litigate in arbitration and the future infringement cases will be filed at the Intellectual Property Court instead of Arbitral Tribunals. If approved by the Parliament, the amendment will enter into force 30 days after publication of the new law.
Supplementary Protection Certificates
The draft foresees that the National IP Office may declare ex-officio the invalidity of an SPC where the patent has been declared invalid.
The draft proposal has redefined the protectable subject matter and added a new exception concerning food products or processes for the preparation, production or confection of such products. The possibility of granting of utility models without substantive examination is eliminated.
The proposal foresees a new administrative procedure for invalidation of registered designs. The current law has no such procedure, only courts may declare the invalidation of a registered design right.
The proposal reflects the provisions of the Directive (EU) 2015/2436 which brings some important innovations into the national law, namely the request of evidence of use as a defence in opposition proceedings, the intervening rights of proprietor of later registered trademarks as defence in infringement proceedings, new right to prevent the entry of infringing goods in transit where such goods come from third countries, and the rule that the trademark duration shall be counted from the date of filing instead of the granting date.
The law drafters decided to maintain the principle of ex-officio examination of relative grounds of refusal according to which the National IP Office has the power to refuse applications on the basis of its own ex-officio examination on grounds of identity or confusingly similarity with prior trademarks. However in case a provisional refusal is based on a trademark registered for more than 5 years, the applicant will have the right of requesting evidence of use.
Noteworthy is also that the Government has opted to implement the Directive to its full extent, including article 45 of the Directive (procedure for revocation or declaration of invalidity) the implementation of which was only mandatory by 14 January 2023.
Unfair competition and trade secrets
The minimum and maximum fine penalty foreseen for unfair competition acts amounting to administrative offences are substantially increased from 3000-30000 Euros to 5000-100000 Euros (for legal persons) and from 750-7500 Euros to 1000-30000 Euros. The same range of penalties is proposed for the violation of trade secrets.
The draft proposes that trade secrets benefit, with some adaptations, from the civil enforcement procedures and measures provided for industrial property rights and provides for rules of preservation of confidentiality of trade secrets in the course of legal proceedings.
The draft foresees that the criminal authorities will be able to proceed to a direct exams of suspicious goods. The current law provides the need of an expert examination which causes additional delay. The proposal further establishes a deadline of 10 days for the criminal authorities informing the IP right holder and his licensee of the facts concerning a possible infringement. Furthermore, the costs with storing and destroying seized items are proposed to be considered costs of the proceedings in principle to be borne by the infringing party.
The GDPR (General Data Protection Regulation - Regulation EU 2016/679), which entered into full force on 25 may 2018, caused several changes to the internal procedures of the INPI (Portuguese Institute of Industrial Property), namely for assuring the necessary protection of data concerning individuals.
As such, the INPI has informed that the selling of “structured information products”, which cover bibliographic data of publications and applications, are discontinued as from the said date.
On 20 December 2017 the Lisbon Court of Appeal revoked the decision of the 1st chamber of the Intellectual Property Court (IPC), which had found that a likelihood of confusion exists between the trademark PURA ENERGIA applied for in Portugal and the prior trademark PURE ENERGY a trademark registered at EU level. The court allowed coexistence of both marks considering the extreme weakness of the EU prior mark. The relevant decisions were published in the IP Bulletin of March 22, 2018.
In October 2016 PURAWORLDENERGY, LDA, filed at the Portuguese IP Office a national trademark application for a figurative mark with the following representation:
The application covered “electrical energy from non-renewable energy sources” and “electrical energy from renewable energy sources” in class 4. In the course of an ex officio examination the Portuguese IP Office refused the application on the basis of a risk of confusion with the EU trademark No. 06839401 PURE ENERGY, a word mark in the name of Pure Energy Centre Ltd.. The prior EUTM registration covers, inter alia, “hydrogen as a fuel for domestic and commercial purposes; hydrogen fuel for heating; hydrogen fuel for transport, especially vehicles such as cars and boats; hydrogen fuel produced using renewable energy sources, such as wind energy or solar energy” in class 4 and was granted by the EUIPO on 16/04/2012.
The applicant appealed to the 1st instance Intellectual Property Court arguing that there was no risk of confusion between the marks. By applying general legal concepts of trademark comparison, namely that where a word mark is compared to a figurative mark in principle the word elements will be dominant, the IP Court dismissed the appeal and confirmed the refusal decision of the Office.
The applicant then appealed to the Lisbon Court of Appeal. The applicant did not request invalidity of the prior mark to EUIPO and merely insisted on the graphical, aural and linguistic differences between the marks.
The Court of Appeal judgement
Firstly the 2nd instance judges confirmed that the EU trademark was registered for goods that should be deemed similar to the goods of the applied mark. Moreover they acknowledged that the figurative element of the applied mark is of no relevant impact for distinguishing the marks under comparison.
Furthermore the court found that PURE ENERGY or the Portuguese equivalent terms (“energia pura” or “pura energia”) are words of “common use” in “people’s everyday life” and consequently the prior mark should be deemed “extremely weak”. The court mentioned as an example that the law does not allow the registration of totally descriptive marks such as the mark PURA LÃ (meaning PURE WOOL) for clothing articles.
The court said: “such words or expressions can be incorporated in any mark but this cannot be granted exclusively to anyone, since nobody may have its monopoly under penalty of impairing the competition rules”. Consequently “a simple morphological change of the designation of the product/service or the mere addition of a minimally expressive figurative element can be enough for a finding of no risk of confusion”.
Hence the court revoked the 1st instance decision and ordered the granting of the registration to the applied mark.
In this case it is certainly puzzling that EUIPO has granted registration to the EUTM No. 06839401 PURE ENERGY to cover “hydrogen fuel” in particular when the European Office had already refused the registration of the same mark for similar goods on the basis of descriptive nature and lack of distinctive character (EUTM Application no. 003088821 PURE ENERGY filed by BP, plc for “gas” in class 4).
The decision is one among other decisions from Portuguese courts where the strength (not the validity) of a registered mark is questioned because the mark is made of terms which are in the dictionary even if it is the English or French dictionaries and those terms may often give an indication of characteristics of the goods. It may be difficult however to see a clear borderline between “extremely weak” and “invalid”.
The international magazine World Trademark Review has listed Simões, Garcia, Corte-Real & Associados as a gold recommended firm for 2018. Individually, João Luís Garcia and António Corte-Real were distinguished as trademark experts.
The WTR 1000 research directory, which focuses exclusively on trademark practices and practitioners, has established itself as a definitive resource for those seeking legal trademark expertise. The WTR 1000 identifies the trademark industry's leading lights in jurisdictions around the world.
We are honored and happy to be ranked again in the WTR1000! Many thanks to all our clients, colleagues and to all the team!
For the first time in Portugal, MARQUES organized a discussion meeting with the judges of the Portuguese Intellectual Property Court. The meeting was held on 6 December at the ‘Museu do Oriente’ in Lisbon and about 45 people attended, including IP lawyers and IP practitioners and participants from the Patent and Trademark Office and from industry. SGCR also participated in the meeting.
Two Portuguese IP judges took part: Judge Mrs Eleonora Maria Pereira de Almeida Viegas and Judge Mr Luis Manuel Chaves da Fonseca Ferrão. The judges took part in each of the meeting sessions followed by a general discussion. The interesting topics covered by the speakers and discussions were: (1) Principle of confusion – need for adjustment to the sophistication of the market; (2) Unfair competition – autonomy regarding private rights and judicial practice; and (3) Compensation claims arising from trade mark infringement and preliminary injunctions.
SGCR has attended the last INTA Leadership Meeting, in Washington DC, USA, from 6 to 10 November past.
An enriching experience, which included the participation in new and dynamic Committees (such as, among others, the Unfair Competition committee) and broad and enlightening sessions approaching different issues such as the intersection between trademarks and copyright or the instruments to fight piracy in China or, even, the impacts of plain packaging and brand restriction.
It was also the occasion for SGCR to forge new ties with participants from all over the world and to strengthen its international presence.
Last June 22nd the Lisbon Court of Appeal confirmed the decision of the 2nd Section of the Intellectual Property Court (“IPC”), which refused the registration of the national trademark Guaraná Brasil (figurative). The decision was published in the Bulletin of October 18th, 2017.
This case shows that in a dispute regarding trademarks only, it is possible to succeed in claiming copyright protection over the figurative element of word and device trademarks.
In July 2001 Unicer Bebidas de Portugal SGPS, SA, filed the trademark application no. 357.798 Guaraná Brasil to cover guaraná drinks from Brasil in class 32 which had the following represention:
The said application was opposed by Companhia Brasileira de Bebidas SA (now Ambev, SA). The opponent filed the national application no. 358.312 for the mark Guaraná Brahma (figurative) in August 2001:
The decision at issue rejected the earlier application of Unicer and granted the application lodged by Ambev. On appeal to the 1st instance court, Unicer argued, among other points, that the opponent was not entitled the right to the trademark’s device, since he was not the copyright owner regarding that image. The question remained to know who the owner of the copyright over the device included in the trademark no 357.798 was.
The IP Court judgement
The IPC decision begins by stating that, as a rule, the author - that is, the intellectual creator of the work – is the holder of the exclusive right to benefit from and use the work, in whole or in part, meaning that he has the legal power to disseminate, publish and economically exploit the work. It also the author who, likewise, grants the authorization of use or exploitation to third parties and, if he wishes to, to transfer his patrimonial rights covered by his copyright.
In this case, the opponent succeeded in proving his copyright on the device included in the trademark mark 357.798. A substantially similar image had been used as a label for drinks by the opponent in Brazil, long before the date of the opposed trademark application in Portugal.
The labels are as follows:
Label used by the Appealed party in Brazil Label for marketing in Portugal
The proof regarding whom has commissioned the work (which pointed to the opponent) and the proof made of the assignment of the device’s copyright [patrimonial right] in favor of the opponent, was essential to reach this conclusion.
Unicer claimed copyright over the device for the work’s adaptation to Portugal (that is, by the inclusion of the word Brazil instead of Brahma). However it was not proved that the appellant had commissioned any work, namely the execution of the label or of the image’s adaptation to Portugal. The intervention of the appellant was not deemed to be decisive. Furthermore the Court stated that the new device could not qualify as an original work because it did not consist of a “personality mark resulting from the author’s effort”, since the signs were the almost the same in their device elements. Consequently, the small modification of the text, from Brahma to Brazil, was considered not to bring any originality.
Risk of confusion
Finally, the Court held that, since the differences between the signs are practically none, there is a likelihood of confusion and association between the goods and services offered and provided by the two companies and, consequently, the possibility of practice of acts of unfair competition.
The Court of Appeal fully upheld the judgment.
The present case demonstrates that it is possible to invoke copyright over the device element of word and device trademarks within disputes regarding trademarks and where there is a claim of imitation or of likelihood of confusion between signs.
It also recalls that it is important to substantially prove the commission of the work or the development of the device by the author, in order to determine who the holder of the copyright of such device is. Moreover, it reminds us how important it is to gather written proof of the work’s commission or evidence supporting that such work was developed within a contract of employment, for instance, and also to keep written proof regarding the transfer of the patrimonial rights included in copyright (which are associated with economic exploitation) by the intellectual creator to a third party, which shall respect formal requirements.
It recalled us, albeit indirectly, that it is important to pay attention to the formal requirements for a transmission of patrimonial rights included in copyright (which, in the Portuguese case, must be made by a public deed), in order to be able to argue, at the right moment, a possible failure in such transfer procedure which can lead to its invalidity due to lack of form.
The European Patent Office (EPO) has announced that Mr. António Campinos was elected to succeed Benoît Battistelli as President of the EPO.
The five-year mandate of the new President will start on 1 July 2018.
Mr. Campinos is a Portuguese national who is currently the Executive Director of the European Union Intellectual Property Office (EUIPO). Before that he has been a President of the Portuguese Institute of Industrial Property (INPI). He has a degree in Law from the University of Montpellier, a postgraduate degree in European Studies from the University of Nancy, and a Masters' degree in Public Law from the University of Montpellier. He worked for the Portuguese Ministry of Economy and Innovation before becoming Director of Trademarks at the INPI in 2000.
“It is the first time that a national from the South of Europe is appointed as the head of the EPO. This decisive outcome shows how the European Patent Organisation has matured in terms of implementing strong governance and providing leadership in decision making that will serve European innovation”, Mr. Battistelli said.
We warmly congratulate António and wish him success for the new challenge!
The 2nd Instance Court of Macao has confirmed refusal of registration to two trademarks which had been applied by Exxon Mobil Corporation concerning a coloured gas cylinder.
The marks depict a gas cylinder represented in a two-point perspective, in “blue” or “red” as claimed. The marks were classified as “figurative marks” and not as tridimensional marks. The list of goods covers “Industrial oils and fats; lubricants; products to absorb, water and turn on dust; fuels (including motor gasoline) and lighting materials; candles and wicks for lighting; gases; butane; propane; liquefied petroleum gas” in class 4.
The examiner of the Trademark Office of Macao refused both applications. He considered that the marks lack distinctive character as the signs are common or customary in trade. The applicant appealed to the 1st instance Court of Macao alleging that the Office did not duly consider the signs, namely the colour claim. However the court confirmed the Office decisions.
In the appeal to the 2nd Instance, the court also confirmed the earlier decisions. According to the 2nd Instance court, the marks applied should be interpreted as coloured tridimensional marks. The court said that 3D marks are registrable in Macao provided that the shapes in question are not usual and have sufficient distinctive character. However “the signs in the present case correspond to a typical and usual sign that any gas trading company (and/or similar fuel) uses”. In this way they do not meet the required distinctiveness because they lack the unusual or idiosyncratic nature of their form that leads the consumer to "mark it in his memory". As to the colour claims the court found that, such colors, by itself, without any work of ornamentation or adornment, “do not confer any distinctive character” and “does not give them any originality differentiating enough for the purpose”.
On 18 August 2017 the Portuguese legislature adopted the Law 83/2017 which provides for very specific amendments to the Industrial Property Code and the Criminal Code in the context of combating money laundering and financing of terrorism.
The incrimination of money laundering is foreseen in the Criminal Code: whoever converts, transfers, aids or facilitates any operation of conversion or transfer of advantages obtained by him or by a third party, directly or indirectly, in order to conceal its illicit origin, or to prevent the perpetrator or participant of such infringements from being criminally persecuted or subjected to a criminal offense, shall be punished with imprisonment from two to twelve years.
The new law rewrites the incrimination of money laundering (article 368-A of Criminal Code) to add the advantages or goods (e.g. money) resulting from the selling, putting in circulation or concealing counterfeited products. According to the Industrial Property Code “counterfeited products” are the products which criminally infringe certain industrial property right, namely trademarks, patents, utility models and designs.
Furthermore, Law 83/2017 increases the penalty for the crime of selling, putting in circulation or concealing counterfeited products from 12 months to 18 months.
Portugal followed the European Union recommendation that EU countries should take particular account of instruments of international bodies active in the fight against money laundering and terrorist financing, namely the FATF Recommendations (Financial Action Task Force, an independent inter-governmental body). The FATF Recommendations state that countries should apply the crime of money laundering to all serious offences, with a view to including the widest range of offences, among others, the counterfeiting and piracy of products.
New official fees are applicable in the Industrial Property Office of Portugal as from 1 September 2017, according to the Decision No. 780/2017 of the Management Board of the IP Office and the Government Regulation No. 1098/2008.
All official fees have been adjusted in accordance with the inflation rate of the preceding year (consumer price index excluding housing – 0,56%). There are no other changes either in the structure or level of the official fees.
The Court of Appeal issued an interesting judgement on March 23rd, 2017, on the requirements for the granting of a supplementary protection certificate (SPC). The decision was published in the Industrial Property Bulletin on 19 June.
Alcon Laboratories Inc. had applied for SPC No. 576 for “nepafenac”, a non-steroidal anti-inflammatory drug contained in the medicinal product NEVANAC (a collyrium), invoking the European Patent No. 999825, regarding “ophthalmic compositions containing galactomannan polymers and borate” as the basic patent.
The Portuguese Patent Office (INPI) refused the SPC on the grounds that it did not meet all the requirements of Regulation (EC) 469/2009, namely that the product for which the applicant sought protection was not covered by a basic patent in force. In fact, from the INPI’s perspective, the core of the invention protected by the patent consisted of a composition comprising only the adjuvants - which cannot be protected by means of SPC -, being the addition of active principle(s) only an embodiment of the invention. The INPI further noted that neither in the description nor in the claims (interpreted inter alia in the light of the description of the invention, as required by Article 69 of the Convention and the Protocol) there was any reference to “nepafenac”.
Against that latter argument, the claimant invoked the guidance given by decision of the Court of Justice of the European Union in case C-493/12 (Eli-Lilly vs. HGS). The Office however, considered that contrary to what happened with the product that based the decision invoked (of the biotechnological type), nepafenac could be perfectly defined in a structural way. Furthermore, the Office added that even if the active principle were to be defined by a functional formula, it would always had to be concluded, in the light of the Eli Lily case, that the claims relate, implicitly but necessarily and specifically , to the active ingredient in question, which was not the case.
On appeal, the first instance court – the Intellectual Property Court – upheld the INPI's decision, basically reaffirming the examiner’s argumentation. The Court of Appeal would also do so with a more detailed reasoning.
The ensemble of the three decisions form an interesting reading for legal experts and are important for those who deal with SPCs, mainly because it involves a fundamental SPC topic and the application of the jurisprudence of the European Court of Justice. The core question is about whether a product is contained in the basic patent or not and more specifically when it is considered that the product’s definition (be it structural or functional) made in the claims specifically addresses, in an implicit but necessary way, the active principle to be protected. In this case the Courts made clear that the definition cannot be too generic, for example, made by reference to a too broad category (such as that of “anti-inflammatories”). The IP Court and Court of Appeal decisions follow another judgment of the IP Court published on November 2016, on a SPC for agalsidase beta where the Eli Lilly case was also relevant for the IP Court’s findings. Again, the IP Court confirmed refusal of protection to the SPC because it was considered that the active principle was not covered by the basic patent invoked.
According to the Ministry Decree No. 39/2017 new official fees are applicable in the Industrial Property Office of Mozambique as from 15 July 2017.
The last amendment of the official fees in Mozambique had been made in 2006. Therefore the new decree updates and increases the fees for the several registration actions regarding trademarks, patents, utility models, designs and the remaining industrial property rights.
Furthermore the new table of fees published by the Ministry Decree No. 39/2017 appears to simplify the calculation of the relevant items e.g. the application fee for trademarks is a single fee instead of a group of fees (request fee, publication fee, examination fee, etc.).
Some new specific fees are adopted for instances regarding the recordal of a change of representative (1500 MZN), requesting urgent certificates (4000 MZN whereas the normal certificate fee will be 1275 MZN), requesting patent substantive examination (10000 MZN) and requesting the conversion of patent into utility model (3000 MZN).
Portugal has stepped forward to house the European Medicines Agency (EMA) currently located in London, once Brexit becomes a reality. “Portugal has technical, scientific and regulatory conditions to receive the Agency" said recently the Portuguese Health Minister Adalberto Campos Fernandes during a visit to the EMA’s headquarters in London.
The Minister highlighted the merits of Lisbon promising the national commitment to a rapid transition that would minimize the impact on the regular activities of the EMA. “This is a logistics operation of many thousands of people. What the Agency wants is a good building, with good conditions and space to work. This is the easiest to do. But in 30 days people have to be accommodated, the kids ' school must be set and the employability for spouses/partners. There has to be a package of integration, to make life easier.”
The Minister considered that “the climate, the cost of accommodation, the existence of international schools and infrastructures in Portugal are strong arguments”, believing that it will not be easy to find equivalent conditions in other cities, namely the combination of life quality and cost of living itself, such as Lisbon provides. Other strong advantages of Lisbon are its hotel capacity, cosmopolitan culture and overall safety.
The importance of being EMA
The EMA acts as the regulatory agency deciding if pharmaceutical products are safe for the European single market as well as in the countries of the European Economic Area. Set up in 1995, EMA employs about 900 highly skilled staff, making it one of the biggest EU agencies. With its annual budget of €300 million and some 65,000 visitors to more than 500 international meetings every year it is expected that the relocation of EMA brings a positive effect for any country’s medical and pharmaceutical industry. The decision on where to move EMA is a political one and will be made by the European Council, presumably until 2019.
A very lively competition for the EMA relocation after Brexit is already in place. Other countries such as the Netherlands, Germany, Ireland, Sweden, Austria, Denmark and Spain are preparing to make formal bids for the EMA. In addition to Portugal, according to the information known, for over 13 countries that have also publicly expressed their interest in hosting the headquarters of the EMA. The Portuguese Minister, however, is optimistic: “Portugal and the Portuguese have come to give evidence of their resistance, resilience and competence”.
IP STARS 2017 has listed Simões, Garcia, Corte-Real & Associated as a notable firm in "patent prosecution", "trademark" and "contentious trademark prosecution" and distinguished João Luís Garcia on an individual level.
IP STARS 2017 is an international ranking of intellectual property professionals annually organized by the well-known Intellectual Property magazine Managing Intellectual Property.
On 15 March 2017 the Industrial Property Office of Mozambique has issued a notice which confirms applicability of the 11th Edition of the Nice Classification in said country. The Nice Classification is an international classification of goods and services applied for the registration of marks which was established by the Nice Agreement (1957).
The 11th edition of the Nice Classification came into force on January 1, 2017 and is applied in Mozambique as from 1 April 2017.