On 11 December 2019 the newly created IP Section of the Lisbon Court of Appeals has issued a judgement accepting that the Office decisions to suspend examination may be appealed.
It is the first time that a decision of the CoA is issued on this specific matter. The suspension decisions of the Office were the topic of a round table conversation with several IP professionals promoted by the INPI on 4 December 2019 (Conversas Com).
According to the Industrial Property Code the INPI may suspend examination or opposition proceedings ex officio or at the request of one party by reason of a “prejudicial cause”.
In this case INPI had decided to suspend examination of a trademark application until the final decision of an appeal filed by a third party in a parallel case of the same applicant. The applicant appealed.
The 1st instance Intellectual Property Court rejected admission of the appeal considering that the suspension decision merely affects an application and does not “grant, refuse, modify or affect any industrial property rights”.
The Court of Appeal revoked the IP Court understanding considering that:
- an application for registration has some legal effects, namely the provisional protection conferred from the date of publication in the IP Bulletin: consequently the suspension may affect an industrial property right in constituendo;
- suspending a case is not innocuous; “often not deciding is more damaging than denying a claim”.