The Portuguese Government is preparing a proposal for further changes to the Industrial Property Code.
The code currently in force was approved by the Decree-Law No. 110/2018, published on 10 December 2018, having started its application just over a year ago. Despite the short time that has elapsed, the Government has recently sent to the stakeholders a proposal for new amendments. The Government considers that it is necessary to revisit this matter due to the following main reasons:
- to provide for the possibility of the European Patent Office, instead of the Portuguese PTO, preparing the Research Report with Written Opinion based on a translation of the claims provided in national patent applications;
- to reintroduce rules on the allocation of a classified security regime for some inventions that may be of interest to national defense;
- and to correct errors detected and include clarifications of some rules; particularly in the field of trademarks and logotypes, the proposal foresees extending the proof of use requirement to logotype holders under the same terms provided for trademarks.
We will return to this topic when the amendment is adopted.
The Decree-Law No. 171/2019 published on 12 December 2019, amends the legal protection regime for Olympic and Paralympic symbols in Portugal.
The main objective of the new legislation is to update the regime that was in force since 2012 and adapt it to the new Industrial Property Code, approved by Decree-Law No. 110/2018, on 10 December 2018.
In addition to the “Olympic properties” (for example, the five Olympic rings or the word “Olympic”), and similar symbols (for example, the expression “Olympic Games”) the new law identifies the “Paralympic properties” (for example the motto “Sprint in Motion”) and similar symbols (for example, “Paralympic Games”).
All of these symbols should be considered “signs with a high symbolic value” for the purposes of refusal or invalidation of trademark rights or design rights under the new Industrial Property Code.
The Industrial Property Office must refuse registration of any trademark, logo or any design or model that contains, in all or some of its elements, such protected signs or any signs similar to these, regardless of the products or services to be covered or the activity of the entities to be distinguished. The same applies to the registration of company names by the RNPC (National Register of Legal Persons).
The new law came into force on December 13, 2019.
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 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 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.