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.
On 23 November the Angolan Ministry of Industry held a conference for public presentation of the Draft Industrial Property Law. The main objectives of the event were to present the Draft Law of Industrial Property to society, as well as to raise awareness as to the importance of industrial property in all economic activities.
The current Industrial Property Law, approved by Law no. 3/92, of February 28, 1992 clearly needed to be modernized in order to achieve better protection of business, convergence with international standards and more efficiency in the administration of IP rights. It is expected that the new law is enacted by the Angolan National Parliament within the following months.
The draft law provides for a new and very useful section of general provisions which were not foreseen in the current law. For example several rules for opposition proceedings are applicable to patents, utility models, designs and trademarks namely:
- the possibility of filing oppositions within 60 days after the publication of the application;
- the applicant’s right to submit a reply within 60 days after notification;
- the possibility of extending the deadlines of opposition and reply for 30 days.
The draft law clarifies the protectable inventions and maintains the exclusion of patent protection for “foodstuffs, chemical-pharmaceutical and medicines intended for man or animals”, as such, allowing however patents for their “devices or manufacturing processes”.
The proposed draft provides for formal and substantive examination of national patent applications and for a preliminary search report.
The national phase of PCT applications and payment of renewal fees is now foreseen contrary to the 1992 IP law.
The proposed duration of a patent is now 20 years counted from the application date instead of the 15 years duration provided in the current law.
The proposed law is quite similar to the Portuguese and European trademark law and brings a number of innovative legal features for Angola, namely:
- a wider trademark definition now extending to 3D marks (shapes of products or packaging) and sound marks;
- possibility to protect generic signs used in trade with secondary meaning;
- declarations of consent;
- trademarks with reputation in Angola or the world as ground of refusal of registration of trademarks covering dissimilar goods or services;
- possibility of administrative revocation for non-use during 5 consecutive years without due cause;
- possibility of registration of collective trademarks (association and certification marks);
- exhaustion of trademark rights.
Furthermore the draft law proposes a full revision and extensive amendments of the rules regarding sanctions for infringements of industrial property rights and unfair competition acts.
We will report further legislative developments.
On 27 November the Portuguese Council of Ministers approved a draft law on permitted uses regarding works and other materials protected by copyright and related rights for the benefit of persons who are blind, visually impaired or otherwise print-disabled.
The law implements Directive (EU) 2017/1564 which adopts the Marrakesh Treaty in the EU law. The Marrakesh Treaty is a WIPO administered treaty that improves the availability and cross-border exchange of certain works and other protected subject matter in accessible formats for persons who are blind, visually impaired or otherwise print-disabled. Essentially the treaty requires rules establishing exceptions for uses, works and beneficiary persons covered by that treaty.
Surprisingly the EU Commission had initiated proceedings for infringement against 17 Member States, including Portugal, for non-compliance with the said Directive on 26 November just one day earlier.
The new and still unpublished law further decriminalizes the unauthorized public communication of commercially edited phonograms and videograms in Portugal. The decriminalization goes along with the creation of an alternative regime of fines of administrative nature for encouraging a speedy restoration of legality. Apparently the decriminalization follows a consensus existing among the most representative associations of users and the majority of the entities that represent the right holders.
Simões Garcia Corte-Real & Associados attended the INTA Leadership Meeting 2018, from November 6 to 9, this time in New Orleans, USA.
The meeting sessions included very interesting panels on “Branding for Restaurants”, “Virtual Reality”, “Artificial Intelligence”, and “Trademarks and Trade Dress”. The topics were presented by highly experienced professionals and industry representatives from all over the world.
INTA influencers, a new feature of INTA’s events, was also a highly successful and relatable program, with important testimonies of creativity, success and personal and professional values. There was also hard work on the Committees with the participation of SGCR’s attorney-at-law Joana Coelho in the Right of Publicity Committee.
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”.