It is a basic principle of European Union trademark law that terms that are descriptive may not be registered as an EU trademark. Simply because a sign that merely describes the goods and/or services offered cannot be monopolized.
However if such descriptive term is combined with other figurative elements that make the sign as a whole distinctive the mark may be validly registered. In such cases the difficult question is: when is the mark figurative enough to reach the minimum degree of distinctive character that is required for a registration?
The General Court by its judgement dated 5-11-2019 in case T-361/18 (APEDA v. EUIPO) shows that the level of distinctiveness required to the figurative elements may be quite demanding.
Burraq Travel & Tours General Tourism Office SA, a company established in Greece, applied to register the following figurative sign (EUTM no. 13102454):
The application was filed to cover “rice” and other rice related goods in classes 30, 31 and 33 of the Nice Classification. The mark at issue was registered on 20 January 2015.
BASMATI is a registered Geographical Indication issued to the Basmati variety of rice grown in seven States in the Indo Gangetic Plain lying below the Himalayas.
The Agricultural and Processed Food Products Export Development Authority (APEDA) is the entity established by the Government of India that is the registered proprietor of the GI and responsible to put in place a system for administration of GI and authentication of the product.
APEDA applied for a declaration of invalidity of the mark registered by Burraq Travel claiming, among other grounds, that the mark at issue mark was descriptive.
Position of EUIPO
The invalidity claim was rejected by the Cancellation Division. On appeal the Board of Appeal confirmed the rejection stating that even though the words ‘basmati’ and ‘rice’ visible in the mark at issue lacked distinctive character for the goods in question in so far as Basmati rice was a variety of rice that was well known to the public in the European Union,
“the mark was not simply composed of the words ‘sir’, ‘basmati’ and ‘rice’, but of a relatively complex whole containing word, geometric, coloured and figurative elements which, taken together, undeniably had distinctive character compensating for and dominating the aforementioned words”.
On appeal APEDA alleged essentially that:
- It is well-known that Basmati rice comes from India or Pakistan
- The depiction of the turbaned man is also descriptive of the origin of the goods because it is well-known that the turban and specific outfit worn by the man in question clearly refer to India or Pakistan, where Basmati rice comes from.
In short the GC concluded the following:
- The marks is invalid because it is descriptive.
- The word ‘sir’ is not such as to confer any notable degree of distinctive character on the mark at issue, either in isolation or considered in the overall impression created by that mark.
- The term ‘Basmati’ does not denote a specific geographical name, but a variety of rice from a specific region of the world. However (contrary to the EUIPO’s understanding) the relevant public also perceives the word ‘basmati’ indirectly as referring to India.
- The turbaned man suggests an inhabitant of an oriental country without suggesting an exclusive link with India or Pakistan but in its overall perception, the mark is descriptive of the goods in question.
- There is no ‘complexity’ of the mark at issue since it is the result, more particularly, of various ‘usual or decorative’ elements.
- The TM representation simply reinforces the descriptive meaning of the word elements of the mark at issue, in so far as it refers to a particular type of rice which, contrary to the contested decision, is known to be grown in India.
On 7 November 2019 the Lisbon Court of Appeal reversed the decision of the 1st chamber of the Intellectual Property Court (IPC), on a case concerning the famous Volkswagen Type 2, the van informally known as Transporter, the Bus (US) or Camper (UK) also known as the Hippie van (during the 60s).
Indie Campers, S.A. is a Portuguese internet company that offers campervans in various destinations. Indie Campers applied for the national trademark registration no. 586625, a word and device mark, , for goods/services in classes 12, 20, 24, 35, 39, 41 and 43.
Volkswagen AG opposed the application on the basis of risk of confusion with the EUTMs for figurative and 3D marks depicting the VW Type 2 vehicle for goods in classes 12, 14, 16, 18, 20, 21, 25, 28, 30, 35, 37 and risk of unfair competition.
On 07-02-2017 the IP Office dismissed the opposition and granted the registration. The opponent appealed to the Intellectual Property Court.
1st instance decision
The IP Court revoked the granting decision considering that the goods/services are aimed at the same target audience, would share the same channels of promotion and distribution, with some of them having a relationship of complementarity. The court considered that the applied mark imitates the prior marks invoked by the opponent which depict the well-known and popular 1950 VW van. The IP court added that the applied mark could take advantage of the prior marks’ notoriety in the market, which constitutes an act of unfair competition.
Court of Appeal
The court of appeal reversed the IP court decision and reinstated the grant of the Indie Campers registration. The court found that:
- The applied mark has a word element, which appears prominently in relation to the figurative element, and this implies a significant differentiation in relation to the prior marks which are merely figurative marks.
- The applied mark has a visible color play especially the contrast between the cyan blue color in which the word element is written in white and the bright orange background in which the figure is inserted, elements that give the mark a distinctive appearance.
- Due to their word and visual elements, the marks under comparison are globally different and no likelihood of confusion or unfair competition is possible.
On 24 September 2019 the internal organization of the National Industrial Property Office (INPI) was amended to include a new organic unity called Direction of Cancellation of Rights (DCR).
The DCR will have the competence to decide applications for revocation or requests for declarations of invalidity of registrations, namely registrations for trademarks, logotypes, designs or models and geographical indications.
The direct cause of this change is Decree-Law 110/2018 of 10 December that has approved a new Code of Industrial Property. The new code established administrative procedures for assessing the validity of certain IP rights, a competence that was exclusively of the Intellectual Property Court until 1 July 2019. This was primarily an implementation of Directive (EU) 2015/2436 which obliges Member States to provide for an “efficient and expeditious administrative procedure” for the revocation or declaration of invalidity of a trademark. However the Portuguese legislator decided to extend the possibility of an administrative invalidation to other distinctive signs, designs or models and geographical indications.
The DCR will operate under the Directive Council of the Office in parallel with the other organic units of the Office, namely the Trademark and Patent Direction that will be in charge of the examination of applications for IP rights and oppositions.
The judgement of the Court of Justice of the European Union (CJEU) issued on 12 September 2019 in case C-638/17 (Cofemel — Sociedade de Vestuário SA v G-Star Raw CV) ruled that a national legislation cannot grant protection under copyright to models such as items of clothing that beyond their utilitarian purpose produce a specific visual aesthetic effect.
The ruling addresses the complex overlaps between design and copyright law in the case of useful articles in a referral from the Portuguese Supreme Court previously reported here.
In the question answered by the CJEU the Portuguese Supreme Court asked if Article 2(a) of Directive 2001/29/EC precludes a national legislation — in the present case, the provision in Article 2(1)(i) of the Portuguese Copyright Code — that confers copyright protection on works of applied art, industrial designs and works of design which, in addition to the utilitarian purpose they serve, create their own visual and distinctive effect from an aesthetic point of view.
In a nutshell the court said: yes it does because an aesthetic effect is intrinsically subjective and therefore the design or models in question do not meet the conditions that must be satisfied for subject matter to be classified as a ‘work’, namely sufficient precision and objectivity.
The European concept of protected ‘work’
In line with former case law the CJEU started by mentioning that in view of the need for a uniform application of EU law and the principle of equality, the concept of ‘work’ protectable under copyright law must normally be given an autonomous and uniform interpretation throughout the European Union.
Two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of Directive 2001/29
1) First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation – it is the intellectual creation of the author if it reflects his personality and expresses his free and creative choices in the production of that work.
2) Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29. This implies that the subject matter at issue is identifiable with sufficient precision and objectivity (case Levola Hengelo, C‑310/17, par. 40).
Principle of cumulation, law diversity and competition
The CJEU referred that the European legislator has opted for a system whereby the protection afforded to designs and copyright is not mutually exclusive. This means that a principle of 'cumulation' of the protection of designs on the one hand with copyright protection on the other applies. Consequently the CJEU does not exclude that models or designs may be considered works if the 2 cumulative requirements are met.
However the protection of designs or models aims at objects (products) that, although new and individualized, are utilitarian and can be mass produced. This protection is intended to be applied for a limited but sufficient period to enable the recovery of the investments made in the creation and production of such objects without, however, hindering competition excessively. As to the protection associated with copyright, whose duration is very significantly longer, is reserved for objects that deserve to be qualified as ‘works’.
For these reasons, granting copyright protection to an object protected as a design or model cannot undermine the respective purposes and effectiveness of those two types of protection.
It follows that, although protection of designs and protection associated with copyright may, under Union law, be accorded cumulatively to the same object, such cumulation may be permitted only in certain situations.
The essence of the judgement is that utilitarian objects, such as clothing, even one that has a striking aesthetic effect, is not endowed with originality that deserves copyright protection. The aesthetic effect results from a “subjective sensation of beauty experienced by each person looking at that model” the CJEU considered. Consequently, such an effect of a subjective nature cannot in itself characterize the existence of an identifiable object with sufficient precision and objectivity.
Nevertheless our reading is that the CJEU has welcomed the Advocate General's warning about the harmful consequences of excessive copyright protection of designs or models.
By stressing the different purposes of design or model laws protecting current and mass-produced utility objects, and the copyright laws protecting original ‘works’ and by considering that cumulative protection can only be allowed in certain situations (par. 52), the CJEU has in fact limited future application of copyright protection for utilitarian designs or models.
The BELENENSES name controversy involves the name and logo of the Football Club Os Belenenses (FC Belenenses), a one hundred year’s history and well-established Club of Lisbon, Portugal.
The Intellectual Property court granted a preliminary injunction request filed by FC Belenenses against Os Belenenses – Sociedade Desportiva de Futebol, SAD (Belenenses Futebol, SAD), the company that is actually using the name BELENENSES in the Portuguese football premier league (known as the NOS League). On 8 March 2019 the Lisbon Court of Appeals confirmed the decision in essence.
(figurative mark) (word mark)
Around 1999 the Football Club Os Belenenses (FC Belenenses), a past winner of the main Portuguese football league (1945-46), founded a public limited sports company under the name Os Belenenses – Sociedade Desportiva de Futebol, SAD (Belenenses Futebol, SAD).
FC Belenenses transferred to Belenenses Futebol, SAD the right of participation in the Portuguese premier league, now NOS League, and authorized use of its registered trademark rights on the name BELENENSES and its emblem under specifically agreed terms.
In 2012 FC Belenenses reduced their position as shareholder of Belenenses SAD to 10% and in 2018, due to conflicts between the parties, the trademark agreement was terminated. As a consequence, FC Belenenses eventually prevented use of its stadium and injuncted Belenenses Futebol, SAD for trademark infringement.
Belenenses Futebol, SAD invoked a legal right to use the name and symbol of BELENENSES in coexistence, claiming that, according to the law of sports companies, the professional football team of FC Belenenses and its identification elements have imperatively been incorporated in the defendant. Furthermore, the defendant claimed that the trademark agreement could not terminate as long as the plaintiff remained its shareholder. The defendant also alleged bad faith since the plaintiff has acquiesced the use of the mark for more than five consecutive years.
The court of appeals rejected the idea that, under the sports companies’ law, the transference of a right to use the trademarks of the founding club was imperative: “the right to use the Club's symbology and trademarks may be transferred to the new corporate entity or not, the law giving a “opt-in freedom for the founding Club”. Additionally the parties made a specific written “protocol” providing that the Club’s signs would remain in the Club’s ownership and “no right could be asserted by the SAD other than those foreseen therein”. The court also excluded the bad faith argument considering that the plaintiff was “defending its trademark right”.
Meanwhile FC Belenenses has established a new football team, which uses the BELENENSES trademarks, although playing in a different competition (II Division in the Lisbon League). The Club has made public on its website that it has formally requested that the Professional Football League ceases use of the name BELENENSES for identification of any participants in the NOS League.
The Portuguese Parliament has adopted a law (Law 55/2019 of 5 August 2019) amending the Law of the Organization of the Judiciary System, in respect of two important aspects in the field of intellectual property.
Firstly, the law gives new powers to the Intellectual Property Court in the area of copyright and also in the contractual field of industrial property rights.
The IP court jurisdiction had already expanded with the entry into force of the new Industrial Property Code (Decree-Law 110/2018 of 10 December), namely to extend it to disputes in relation to the infringement of trade secrets in the field of industrial property. Law 55/2019 now introduces into the IP court’s range of competences:
- the actions in which the claim concerns compliance or non-compliance, validity, effectiveness and interpretation of contracts and legal acts having as their object the constitution, transmission, encumbrance, disposition, licensing and authorization to use copyright, related rights as well as industrial property rights in any of the modalities provided for by law;
- the actions in which the claim concerns the legal regime of private copying;
- the appeals against decisions of the General Inspectorate of Cultural Activities (IGAC) concerning the registration of literary and artistic works and the registration and supervision of collective management entities of copyright and related rights, as well as decisions of IGAC in administrative infringement proceedings.
Secondly, Law No. 55/2019 creates a new section in the Lisbon Court of Appeals specializing in intellectual property and competition, regulation and supervision which will have jurisdiction over the causes of the IP court and the Competition, Regulation and Supervision court.
The amendments will enter into force on 1 October 2019.
Portugal has adopted Law 31/2019 published on 3 May 2019 that regulates the use of personal digital devices and allows the digital reproduction, in images, of documents, in public libraries and archives. The new law applies from 1 June 2019.
Digital devices for personal use, for the purposes of this law, include, but are not limited to, laptops, tablets, data storage media, audio playback players and headphones, digital mobile phones and digital still cameras.
The law allows the use of personal digital devices for the digital reproduction of documents in the reading rooms of public libraries and archives, without any added costs.
In view of potential copyright issues, the reader may only collect the images and digital reproductions for private use, which excludes any other form of use, such as their public distribution or commercialization. According to the law any infringing use of copyright-protected works implies the reader’s liability only and cannot affect the public institution that provides access to the work.
The public libraries and archives should require a registration of the digital devices and may impose restrictions on their use depending on the degree of degradation of documents, as well as arising from the need for preservation and restoration of documents, or in cases where access is available through a free access digital repository.
The new Portuguese Industrial Property Code came into force on 1 July 2019. Simultaneously the Ministry of Justice and the Ministry of Finance adopted new official fees which are applicable on the same date, according to the Portaria No. 201-A/2019 published on 1 July 2019.
All official fees have been adjusted in accordance with the inflation rate (consumer price index excluding housing – 0,95%). Moreover there are changes which result from the amendments brought by the new IP Code, for example the fees concerning the new invalidation proceedings concerning trademarks or industrial designs.
Furthermore, on 4 July 2019 the Portuguese INPI published its Decision no. 6142/2019 concerning the “Formal requirements and rules for applications and documents that regard the granting of industrial property rights”. This document contemplates implementing rules and technical requirements for applications of patents, utility models, designs, trademarks, etc. including the requirements for representation for the several types of trademarks foreseen (e.g. colour marks per se, sound marks, multimedia marks, movement marks and hologram marks).
The 2019 edition of the Worldwide Symposium on Geographical Indications was held in Lisbon jointly organised by WIPO and the Portuguese Institute of Industrial Property (INPI). The Symposium program included two days of seminars, followed by an excursion on the third day to a region near Lisbon where products protected by geographical indications are produced (Setúbal and Palmela wines). The event was well attended by a significant number of government representatives, international intergovernmental and non-governmental organisations besides individual participants, coming from more than 60 different countries.
The welcoming given by the Portuguese Minister for Justice, Francisca Van Dunem and WIPO’s Director General, Francis Gurry was followed by a note from a special invitee, the Executive Director of the EUIPO, Christian Archambeau who labeled the Symposium as the “most significant international gathering concerning geographical indications”.
Further information can be found in our detailed report here: https://www.linkedin.com/feed/update/urn:li:activity:6552940846717681664.
The IAM Patent 1000, an international ranking of patent professionals, annually organized by the well-known specialized patent matters magazine, IAM, highlighted Simões, Garcia, Corte-Real & Associados in 2019.
The IAM Patent 1000 is known as a resource for those seeking to identify leading patent experts in private practice around the world. For this 2019 ranking, the IAM conducted an exhaustive qualitative research project to identify outstanding companies and individuals in various jurisdictions.
On 7 February 2019 the Lisbon Court of Appeal confirmed the decision of the 1st chamber of the Intellectual Property Court (IPC), on a case concerning the lack of use of the trademark ABANKA in the field of banking services. Both instances confirmed the Industrial Property Office decision to consider that the proofs of use filed by the trademark holder did not show genuine use of the mark in Portugal.
The case is interesting as it gets around the level of use and the type of proof required for a service trademark.
ABANKA VIPA d.d. is a Slovenian company owner of the International trademark registration no. 860632, a word and device mark, , claiming green (Pantone 327), for services in classes 35, 36, 38 and 42 and protected in Portugal since 2006. In class 36 the registration covers, inter alia, “banking services”, “credit and granting of credit”, “financing”, “insurance”, “real estate and property evaluations” and “real estate management”.
On 19 October 2015 ABANCA CORPORACION BANCARIA, S.A., a Spanish company, requested to the IP Office a declaration of cancellation of the ABANKA trademark on grounds of non-use for 5 consecutive years. ABANCA is the applicant of the potentially conflictive international trademark registration no. 1243627 covering identical services in the same classes and which had suffered an opposition filed by the Slovenian company.
On 22 September 2017 and despite the more than 30 documents filed by ABANKA as evidence of use, the IP Office considered that the evidence was not sufficient and cancelled the registration of the mark .
The trademark holder appealed to the 1st instance Intellectual Property Court.
The IP Court was also not convinced by the proofs filed and dismissed the appeal based on the following:
- The mark "does not appear as registered in the colour claimed, or does not appear at all” in a substantial part of the documents;
- Printings from the appellant’s website written in Slovenian are not proper evidence of use in the relevant territory, Portugal;
- Extracts from Google Analytics showing a number of users’ views of the said website from Portugal do not demonstrate use of the mark, as actual or potential clients may simply be in transit;
- Visa and Mastercard credit cards issued by the appellant concerning sporadic transactions with Portuguese entities and with no reference to the mark ABANKA are not suitable evidence of use;
- Email messages exchanged between the employees of the appellant and a Portuguese bank are documents of internal nature which do not show public use of the mark.
The Court of Appeal judgement confirmed the 1st instance court understanding.
Once again a trademark case illustrates the hurdle of proving genuine use through technically convincing evidence. The challenge will potentially increase with the new Industrial Property Code which introduces the “defense for non-use” in the Portuguese law in accordance with the EU Trademark Directive.
On 2 May 2019 the Advocate General Maciej Szpunar presented his conclusions to the European Court of Justice in the case C‑683/17 Cofemel – Sociedade de Vestuário, SA v. G‑Star Raw CV.
The case was referred by the Portuguese Supreme Court of Justice that asked for clarification on the interpretation of the InfoSoc Directive (Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society).
Facts in main proceedings
The request for preliminary ruling of the CJEU originates from the appeal proceedings before the Portuguese Supreme Court of Justice against a verdict of the Lisbon Court of Appeal (268/13.2YHLSB.L1-7, dated 21-02-2017). In its judgment the Court of Appel (CoA) examined whether certain outfit items (sweatshirts, t-shirts and jeans) should be considered works protected by copyright.
The claimant (G-Star Raw CV) alleged that the defendant (Cofemel) was imitating some of its products, namely the G-Star Rowdy model for t-shirts and sweat shirts, and the G-Star Rotor Straight jeans, that should be considered protected by copyright (seen below on the left with the Cofemel product on the right).
Although the judgment received a dissenting vote from one of the three judges, the CoA affirmed that the products in question had an artistic nature thereby confirming the 1st instance decision which had upheld the claim. The CoA said:The innovative and original concept of the pieces of clothing in question establishes an intellectual creation that goes beyond a simple industrial practice, constituting a concept intellectually processed with special and laborious technique, emphasis and imagination, generating a visual effect that is striking from the esthetic point of view.
The degree of overall similarity between the items seems to have impressed the CoA when the court criticized the appellant's argument: “having merely copied the intellectual creation on which others had invested”, now requires a high and highly qualified understanding of the artistic requirement for justifying the clear imitation to which it deliberately and profitably devoted itself”.
The question essentially asked by the Supreme Court is: if a new object was designed mostly for a functional or useful purpose could it be protected by copyright? And if so, are useful articles subject to stricter requirements for copyright protection, namely the level of originality required, in comparison with the purely artistic works?
According to some scholars, the Portuguese law copyright protection for works of applied art is subject to a stricter originality requirement. The law refers specifically that protection is recognized to works of applied arts, industrial designs and design works “which constitute artistic creation” therefore suggesting that only some objects will meet the test.
This question becomes typically relevant in litigation where the claimant’s products lack protection provided by design law, namely through design registration, because such protection is not effective or has lapsed.
The AG Szpunar concludes that the EU copyright law as interpreted by the CJEU protects works that are original in the sense that the work reflects an intellectual creation of its author and provided that the subject matter at issue is identifiable with sufficient precision and objectivity.
Furthermore he adds that Article 2(a) of the InfoSoc Directive precludes industrial designs from being protected only by copyright if they present an added artistic character, which goes beyond what is normally required of other categories of works. Therefore the AG proposes that the normal originality requirement applies to utilitarian designs or works of applied arts.
Finally, although noting that the finding of a possible infringement, entirely lies within the jurisdiction of the national court, the AG seems inclined to disagree that the G-Star outfit items are eligible for copyright protection. More generally, he noted: in the event of a request for the protection of a design or an industrial model by copyright, the national court must take into account the specific objectives and mechanisms of this right, such as the protection not of ideas but of expressions and criteria for the assessment of a infringement of exclusive rights. On the other hand, the national court can not apply to copyright protection the specific design protection criteria.
The overlaps between design and copyright law in the case of useful articles remain a complex area of intellectual property law. We will wait for the CJEU ruling and the final Supreme Court decision with interest.
A new .eu Regulation was published in the Official Journal of the European Union dated 29-03-2019.
The Regulation (EU) 2019/517 of the European Parliament and of the Council of 19 March 2019 on the implementation and functioning of the .eu top-level domain name and amending and repealing Regulation (EC) No 733/2002 and repealing Commission Regulation (EC) No 874/2004, will be applicable from 13 October 2022, except for the article 20 (on the eligibility to EU citizens residing in third countries), which should start applying as of six months after entering into force.
The new regulation aims to make it easier to register an .eu internet domain name and encourage its use by businesses. The rules relax the current eligibility criteria for registration of the .eu domain so that the benefits reach as many people, organisations, and companies as possible, especially young people, small and medium-sized enterprises and non-governmental organisations. However, a domain name can be blocked if it is considered to be defamatory, racist or contrary to public policy or public security.
Top level internet domain .eu is the eighth largest country code on the internet and in 2017 there were more than 3.8 million registrations.
The final text of the law that will amend the Advertising Code approved by Decree-Law 330/90 of 20 of October 1990 and adopt restrictions to marketing for certain foodstuffs and beverages, aimed at minors under 16, was approved by the Parliament’s Committee on Economy, Innovation and Public Works.
This is the result of almost 3 years of discussion in the Portuguese Parliament and follows recommendations of the World health Organization on the marketing of foods and non-alcoholic beverages to children.
The draft law envisages foodstuffs and beverages containing “high energy, salt, sugar, saturated fatty acids and processed fatty acids”.
According to the draft law the categories of products covered will be those compromising a “varied, balanced and healthy diet” and will be defined by the General Directorate of Health (a department of the Ministry of Health) taking into account the recommendations of the WHO and the European Union.
The restrictions envisaged cover the premises and means of marketing/advertising and the content of the relevant communications.
Restrictions concerning premises and means
The draft law prohibits advertising of the “unhealthy” products:
- in pre-school, primary and secondary schools;
- in public playgrounds and open to the public;
- and less than 100 meters from those sites;
- in sports, cultural and recreational activities organized by schools;
- on television and on-demand audiovisual and radio programs within 30 minutes before and after children's programs;
- in cinemas, in films with an age rating of under 16;
- in publications intended for persons under the age of 16;
- on the Internet, via websites or social networks, as well as mobile applications for devices using the Internet, where their content is intended for those under 16 years of age.
Where permitted, advertising for such products should not (subject to more stringent restrictions set out in self-regulatory agreements):
a) Encourage excessive consumption;
b) Disregard non-consumers;
c) Create a sense of urgency or urgent need of consumption of the advertised product;
d) Transmit the idea of facilitation in its acquisition, minimizing its costs;
e) Transmit the idea of benefit in its exclusive or exaggerated consumption, compromising the valorization of a varied and balanced diet and a healthy lifestyle;
f) Associate consumption of the product with the acquisition of status, social success, special skills, popularity, success or intelligence;
g) Use advertising, figures, drawings, personalities and mascots, among others, that are related to programs for children;
h) Communicate characteristics of the products concerned as beneficial to health, omitting the harmful effects.
The law shall enter into force 60 days after its publication.
On 23 March 2019 the European Union Intellectual Property Office has presented the first version for the Common Practice for assessing disclosure of designs on the Internet (CP10 Project).
The CP10 was launched in 2017 with the objective to bring clarity and consistency regarding the formats for proving disclosure of designs on the Internet having in mind that the disclosure of designs is increasingly made on the Internet and new questions are arising as to the probative value of online disclosures.
Why is it relevant
The CP10 document is intended as a reference for the Industrial Property Offices of Member States and other relevant authorities, for assessing disclosure of designs on the Internet.
A design is only protected by European Union law to the extent that it is new and has individual character. The assessment of novelty and individual character should be made at the moment when the design has been made available to the public. Consequently it is of utmost importance to determine when the design was publicly disclosed.
Disclosure on the Internet
A design is considered to be made available to the public when it has been published, exhibited, used in trade or otherwise disclosed, unless the circles specialised in the sector concerned operating within the European Union could not reasonably have become aware of such event of disclosure.
The CP10 delivers a set of principles on the criteria for assessing disclosure of designs on the Internet and provides recommendations on the following aspects:
- Sources of disclosure on the Internet and aspects to take into account when presenting evidence provided from such sources;
- Types of evidence for presenting information obtained from the Internet;
- Different means for establishing the relevant date of disclosure;
- The availability of the information on disclosure to the public.
The use of a design in electronic trade (e.g. offering a product for sale, displaying a product in an online catalogue) or publishing a design for the purposes of registration or otherwise demonstrates clear examples of events of disclosure. Other sources to consider are social media often used by designers and businesses to share their work and to present new products.
It should be also accepted that designs can be disclosed through apps (e.g. online retail sales, online auctions, social networking, instant messaging, etc.), in e-mails (if they are not considered “private correspondence” and are aimed at commercially promote products) or by file sharing means (namely P2P and file hosting).
Dates and evidence
The CP10 provides a non-exhaustive list of tools which can be used to determine the date of disclosure when the design has been made available on the Internet. Furthermore the CP10 makes recommendations as to the means for presenting the evidence obtained from the Internet in order to establish the event of disclosure.
The Lisbon Court of Appeal (CoA) has judged a case of alleged infringement of a registered Community design regarding soles for footwear in a decision dated 20 September 2018.
The judgement applies the ECJ interpretation regarding “intervening” design registrations and gives hints as to the concept of the informed user and comparison of designs in the footwear sector.
TBL Licensing LLC applied for a preliminary injunction against Vapesol, a company based in Portugal, invoking the Community design no. 001403844-0001, registered by the EUIPO on 10-02-2014 for the Sensorflex ™ sole.
CRD 001403844-0001 Sensorflex ™ sole
The claimant was seeking to prevent use of the defendant’s product in trade and to obtain information on the prices and the quantities sold. The defendant contested the claim based on three arguments:
- that the products in question are protected by the defendant’s Community design no. 3419407-0001 registered on 21-10-2016;
- that there was no urgency to justify a preliminary order because one year had passed since the claimant gained knowledge about the alleged infringement;
- that there is no infringement since the designs in question produce a different overall impression on the informed user.
The 1st instance court dismissed the claim on the basis of the first argument, considering basically that article 19(1) of the Regulation (Council Regulation EC 6/2002 of 12 December on Community designs) confers to the defendant an exclusive right to use the registered design.
Appeal: a different impression
On appeal not surprisingly the Lisbon Court of Appeals (CoA) rejected the findings of the 1st instance IP Court for being contrary to the interpretation of the European Court of Justice in case C-488/10, Celaya Emparanza y Galdos Internacional SA v. Proyectos Integrales de Balizamentos. According to ECJ said article 19(1) of the Designs Regulation must be interpreted as meaning that, in a dispute relating to infringement of the exclusive right conferred by a registered Community design, the right to prevent use by third parties of the design extends to any third party who uses a design that does not produce on informed users a different overall impression, including the third party holder of a later registered Community design.
Interestingly, the CoA rejected also the second argument raised by the defendant. The CoA said that although urgency is a basic element of any precautionary measure, where the applicant alleges an actual infringement of an industrial property right, it is not necessary to establish that there is a danger of serious and irreparable injury therefore it is up to the claimant to define when a court order became urgent. It appears that the CoA understanding was that urgency will be presumed wherever the actual infringement of an industrial property right is claimed.
Finally the CoA analysed the designs and concluded that the claimant’s design was not infringed as a different overall impression is produced.
About the informed user, the court referred to being someone “half way between the technician and the final consumer of shoes, therefore someone like a shoemaker who is accustomed to appreciate the diversity of soles available to apply the remaining materials that make a shoe" and a shoemaker that “has seen a lot of soles with these characteristics".
Then, the CoA highlighted the differences, and in particular “the central part, which corresponds to the arch of the sole of the foot, is of a different size, regardless of the zebra coloring, but above all it has a central motif or medallion which is remarkably diverse” and from which immediately “a different impression results”.
Meanwhile a request for invalidation of the defendant’s Community Design Registration was filed by TBL and is pending at the EUIPO.
The provisions of the new Industrial Property Code concerning trade secrets protection came into force on 1 January 2019 in accordance with Decree Law 110/2018 of 10 December.
Though with almost 6 months delay, the new rules implement the EU Trade Secrets Directive – Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016. The Trade Secrets Directive, seeks to approximate the laws at Union level to ensure higher and consistent minimum standards of civil protection for the unlawful acquisition, use or disclosure of a trade secret.
The key features of the new rules are the following:
1. A trade secret is defined as information that must:
(a) be secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question,
(b) have commercial value because it is secret, and
(c) have been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
The former law contained a slightly stricter definition in relation to the necessary steps to keep the information secret. In contrast, the new law clarifies that the acquisition and use of trade secrets is lawful in some exceptional cases (e.g. for exercising the right to freedom of expression and information; for revealing misconduct, wrongdoing or illegal activity).
2. The unlawful use of trade secret can amount to an administrative offence punishable with a fine. Furthermore, similarly to the civil measures available for enforcement of intellectual property rights, a wide range of civil remedies are available to the trade secret holder including preliminary injunctions. This covers also protection in relation to goods which significantly benefit from a trade secret which was acquired, disclosed or used unlawfully.
The new regime is clearly more far-reaching since the former law only protected trade secrets in the context of unfair competition actions.
3. The confidentiality of a trade secret may be preserved in the course of legal proceedings.
The new rules provide that the court may restrict access to documents and hearings in which trade secrets may be disclosed to a limited number of people. The confidentiality obligation shall in principle remain in force after the legal proceedings have ended.
The international specialized magazine World Trademark Review has given its maximum classification ranking – gold – to Simões, Garcia, Corte-Real & Associados in 2019. Individually, João Luís Garcia and António Corte-Real were distinguished as 2019 recommended trademark experts.
The WTR 1000 research directory focuses exclusively on trademark practices and practitioners and seeks to identify the leading national and international trademark practitioners from around the globe.
The law that approves the new Industrial Property Code - Decree-Law 110/2018, of 10 December 2018 - amended the special regime for industrial property disputes between holders of patents related to medicinal products and companies that produce or distribute generic medicines which had been established by Law 62/2011, of 12 December 2011. The amendments to the said Law 62/2011 came into force on 9 January 2019.
Law 62/2011 produced a number of legal controversies and debates among scholars, arbitrators and higher courts. The amendments now in force address two of the most polemical aspects: the mandatory nature of arbitration and the validity defense.
In 2011 the Portuguese legislators established a regime of mandatory arbitration apparently with the intention was avoiding the lengthier State court proceedings. The special procedure provided by Law 62/2011 was preventive and expeditious and its final aim was to cut the delays of generic medicines entry in the market which had been identified by the European Commission.
The Constitutional Court confirmed that precluding the competence of the normal State court, the Intellectual Property Court, for the enforcement of patents or SPC in this specific sector, namely the transference of interim injunctive relief to mandatory arbitration, is compatible with the constitutional law (e.g. case 763/13).
However the 2018 law drafters considered that the circumstances justifying the mandatory nature of the procedure “were overcome”, possibly taking into account that a specialized intellectual property court is functioning normally since 2012.
The new rules provide that the mandatory character of the arbitration is repealed leaving to the claimant the option of initiating the special procedure at the Intellectual Property Court or, provided all parties agree, starting an ad hoc or institutionalized arbitration procedure. Consequently a party wishing to assert its patent or SPC under Law 62/2011 should submit the dispute to the Intellectual Property Court or, if the opposing party agrees, initiate voluntary arbitration, within 30 days counted from the publication of the application for marketing authorization or registration of the generic medicine on the INFARMED’s website.
Addressing another controversial matter, the new rules provide that in the arbitral proceedings the patent invalidity may be invoked and recognized with mere inter partes effects.
Law 62/2011 omitted any indication as to whether the defendant could raise validity issues whereas the Industrial Property Code stated clearly in article 35 that invalidity can only be declared by a judicial court. In the light of article 35 the dominant interpretation of higher courts’ was that the defendant wishing to argue the industrial property right invalidity must start an independent action at the IP court and request suspension of the arbitration procedure. However the Constitutional court came to consider that this solution was too cumbersome and an unproportioned limitation to the defense right (case 297/16). The solution now adopted by the 2018 legislators appears to be based on the interpretation of the Constitutional court.
Since arbitration procedures now can only take place where the defendant has agreed to such dispute resolution mechanism it is likely that new arbitration procedures will become absolute rarities and even more so the cases where invalidity is declared by arbitrators with mere inter partes effects.
On 21 December 2018 the Board of the Portuguese IP Office (INPI) approved for the first time a Code of Conduct.
The main objective of the Code of Conduct is stating “the deontological principles that prevail in the organization, the standards of conduct of workers in the performance of their mission and what users of the industrial property system should require in their relationship with the INPI”.
Following the Ethics Charter of Public Administration, the following general principles apply as a guideline for all INPI workers in their professional activity: “principles of legality, exemption and impartiality, equality, loyalty, public interest, information and hearing, integrity, competence and responsibility, urbanity and collaboration and good faith”.
In particular, INPI employees:
- “must refrain from providing assistance or advice that may be in any way preferential treatment of third parties;
- “must refrain from participating in any situation that may give rise to conflict of interests”;
- “should not accept either for themselves or on behalf of others, gifts or other offers that may influence, or that can be interpreted as a way to influence their work; however it is possible to accept the hospitality or small gifts that, due to their value and nature, are considered within the limits of normal courtesy” (e.g. gifts of “symbolic value or commercially negligible”).
The violation of the provisions of the Code of Conduct may give rise to disciplinary liability.
The Portuguese Government has enacted the Decree Law 110/2018 published on 10 December 2018 which revokes and amends the Industrial Property Code implementing the Trademark Directive and the Trade Secrets Directive.
The new law brings important changes for all types of industrial property rights not only at the registry and administrative level but also in respect of the enforcement procedures.
The Law 62/2011, which addresses certain industrial property disputes between holders of patents related to medicinal products and companies that produce or distribute generic medicines, is amended by establishing that the option of arbitration becomes voluntary.
The new regime will apply as from 1 July 2019 with the exception of rules concerning trade secrets which begin to apply on 1 January 2019 and the amendments to Law 62/2011 which will come to effect on 9 January 2019.
A quick review of the most significant changes are as appended below.
Amendments to the patent specifications limited: amendments to applications in the examination stage cannot add subject-matter which extends beyond the content of the application as filed.
Future disputes under Law 62/2011 (originators/generic medicines) may be filed at the Intellectual Property court.
- Supplementary Protection Certificates
The Patent Office will be able to declare ex officio that an SPC is invalid where the basic patent was annulled or if the basic patent has lapsed before the period of duration has passed.
New administrative procedure for invalidation: until now the invalidation of registered designs was a matter under the competence of the Intellectual Property court only.
Request for evidence of use in opposition proceedings: the applicant will be allowed to invoke non-use of the opponent’s mark as a defense.
New administrative procedure for declaration of invalidation: until now the competence for invalidation belonged exclusively to the Intellectual Property court.
Creation of new type of crimes for trademark infringement: for example, the importation/exportation of goods with counterfeited trademarks and the use of a trademark reproduction or imitation as company name.
Creation of criminal sanctions for use of registered logotypes: until now infringement of logotypes involved no criminal liability.
Civil enforcement measures are extended to trade secrets
New provision for costs of storing and destroying seized items: those will be deemed proceedings costs, and the responsibility for their payment is determined in accordance with the terms of the criminal procedural law.