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.
A new Industrial Property Code is in force in São Tomé and Príncipe since 9 February 2017 (Decree-Law No. 23/2016, dated February 9, 2017).
The new law makes an extensive revision of the IP law that existed for more than twelve years in Sao Tome e Principe (Law No. 4/2001, of 31 December and Decree 6/2004 of 30 June) and adopts many concepts and solutions that are enshrined in the current Portuguese law and in European law. Among the changes introduced by the new law we point out the following:
In the area of patents
In the area of trademarks
Louis Azzaro BV prevailed in a cancellation case against Nature Up, EURL holder of an international trademark AZZARO for tobacco, ie cigarettes, cigars and pipes, smokers articles, ie matches, lighters, boxes for cigarettes and cigars, cigars and cigarettes cases, in class 34. AZZARO was registered for class 34 goods in Portugal since 2004.
On 19-Nov-2014 the owner of the well-known perfumery and couture brand AZZARO requested cancellation of the identical mark in class 34 on grounds of non-use. The IP Office rejected the cancellation because the holder of the challenged mark submitted evidence that the mark had been used through a licensee who had paid royalties at least until 31-Dec-2009. On appeal to the Intellectual Property Court the Office decision was confirmed.
The problem was that although there was evidence that the mark had been used through a licensee the license agreement was not recorded at the IP Office. The Court of Appeal, in its judgement published on 20 February 2017, found that the entry of the license in the Register was essential since the law recognizes only the use made through a licensee with a "duly recorded" license. Furthermore the court noted that the law establishes that a license may only have effect vis-à-vis third parties after the date of recordal. With no further queries, the court reversed the Office decision and ordered cancellation of the international mark on grounds of non-use.
Unfortunately the court gave limited explanations for its findings. A relevant point which appears to have remained unexamined by the court was that Nature Up, EURL alleged “proper reasons for non-use” since 2010 in view of the fact that the licensee had been judicially notified to cease and desist the use of the mark AZZARO under penalty of a fine. The Court of Appeal deemed that this was not relevant although the IP Office and 1st instance court had considered that such circumstance qualified as a “proper reason” to non-use.
On 14 February 2017 our Lisbon office welcomed 24 graduate students in Law and ICT (information and communication technologies) at the University of Groningen in the Netherlands for a one day workshop organized by SGCR.
The topics focused by various SGCR speakers were intellectual property in Portugal, the IP national and international legal framework, with a particular focus on patents, utility models, trademarks, appellations of origin and means of enforcement.
The work was followed by an interesting presentation and tasting of Portuguese wines and cheeses with appellation of origin.
The international specialized magazine World Trademark Review has again given its maximum classification ranking – gold – to Simões, Garcia, Corte-Real & Associados in 2017. Individually, João Luís Garcia and António Corte-Real were distinguished as 2017 recommended 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 72 jurisdictions around the world.
The Decree Law 5/2017, of 6 January, approves the general principles of advertising for medicinal products and medical devices based on the European Commission guidelines established on the List of Guiding Principles Promoting Good Governance in the Pharmaceutical Sector. The principles are core ethical values for all stakeholders which aim at contributing to ensure good governance in the Health System.
According to the Decree Law 5/2017, companies that produce, distribute or sell medicinal products or medical devices should observe the principles of integrity, respect, responsiveness, accountability, moderation, transparency and collaboration.
This new law also provides for specific rules for entities of the National Health Service (NHS) and the Ministry of Health (MS), concerning the promotion, fund raising and receiving of benefits from suppliers of goods and services in the areas of drugs, medical devices and health technologies, equipment and services in the area of IT or other related matters. Exceptionally NHS and MS bodies may receive benefits from suppliers provided that such benefits are proven to not compromise their impartiality and exemption or have been duly authorised by the MS.
The new law comes into force on 5 February 2017.
On 15 December 2016 the TM Office of Mozambique has issued an official notice providing clarifications on the requirement to file declarations of intention to use a mark (DIU) and the relevant deadlines.
1- The requirement to file the DIU applies to both national and international registrations designating Mozambique. For such purpose the holder must submit an appropriate form in Portuguese directly to the TM Office of Mozambique and pay the prescribed fees.
2- Concerning national trademark registrations the initial DIU should be filed 5 years after the application date. The subsequent DIU shall be filed 5 years after the renewal date. No DIU is required on the renewal date.
3- Concerning international trademark registrations the following rules apply:
(a) The initial DIU must be presented 5 years from the date the TM Office of Mozambique is notified of the international registration or the subsequent designation.
(b) Where the TMO of Mozambique is notified of a subsequent designation less than 5 years before the due date for renewal, the DIU must be submitted within 5 years from the date of renewal.
(c) The subsequent DIU shall be filed 5 years after the renewal date. No DIU is required on the renewal date.
(d) In the instance of international registrations covering several classes the official fee will apply per class.
4- The DIU may be filed 6 months before the above-mentioned 5 year anniversaries, but at the latest of 6 months after the said anniversaries.
The notice brings no new developments regarding national registrations however as to the international trademark registrations this new official interpretation of the Office involves some important changes:
- According to the Office of Mozambique the relevant date for counting the 5 year period is from the date when WIPO notifies the TMO and not from the date of the international registration.
- In the instance of a DIU for international registrations protected in several classes of goods or services the official fee will be charged per each class. Until now only one fee per registration was applied. This is a change of practice that appears to have the purpose of harmonization with national trademark registrations which allow only a single class.
The Macao Economic Services and Macao Chain Stores and Franchise Association signed an agreement to support the setting up of a service platform to assist local small and medium-sized enterprises in registering their trademarks in the Mainland.
The platform provides free information and consultancy services concerning trademarks in China, application procedures, agent referrals and assistance in preliminary contacts. The “Chinese Trademark Registration Information Centre” of Macao Chain Stores and Franchise Association was officially opened on 22 August 2016.