Trade Mark Litigation

Gonçalo Moreira Rato Gonçalo Moreira Rato

1. SOURCES OF LAW

1.1 What are the principal sources of law and regulation relating to trademarks and trademark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

In Portugal, trade marks are ruled by the Portuguese Industrial Property Code, in force since 2003. This Code, approved by Decree-Law 36/2003, also includes provisions on patents, utility models, semiconductor topographies, industrial models and designs, trade marks, names and insignia of establishment, logos, appellations of origin and geographical indications, as well as awards. The code also includes provisions on protection against unfair competition. This code is harmonised with relevant International Treaties and European Union regulations.
The Portuguese Industrial Property Code is the main source of law and regulation which rules trade marks and trade mark litigation. In fact, the Code covers trade mark regulation and also includes provisions relating to criminal offences (ie the infringement of exclusive rights conferred by a trade mark), and other offences subject to legal sanctions (namely unfair competition).
As far as legal proceedings are concerned, the code sets out a number of rules in respect of all private industrial property rights (including trade marks), whereby industrial property owners can prevent third parties from infringing their rights.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of conflict?

Under the Portuguese legal system, in the event of a conflict, the order of priority of the relevant sources is as follows:

• the Portuguese Constitution;
• international rules, principles and conventions;
• national legislation and decrees;
• regional decrees;
• incorporated legal provisions;
• Regulations.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in our country? If so, on what grounds?

In Portugal, all applications of IP rights are published in the Official Gazette (Industrial Property Bulletin) for opposition purposes. The deadline for opposition is two months from publication. Presently the Bulletin is published every day. Therefore, any third party can oppose any Portuguese trade mark application or any application for protection in Portugal of any International trade mark (Madrid Agreement).
The basis for such opposition can be the lack of formal requirements, the existence of previous rights and unfair competition.
From the decision of the Portuguese Industrial Property Institute (INPI) granting or refusing the right, an appeal can be made to the Lisbon Court of Commerce.
On the other hand, any third party can request the cancellation of a Portuguese and/or International trade mark registration (Madrid Agreement/Protocol) for lack of use. Such request is also filed at the Portuguese INPI and from the decision of the INPI an appeal can be filed to the Lisbon Court of Commerce.

2.2 In which courts are trade marks enforced? Are they specialised trade mark courts? If not, what level expertise can a trade mark holder expect from the courts?

In principle, matters regarding industrial property rights are dealt with by the commercial courts, established by the Law 3/99, of 13 January 1999.
These courts deal not only with industrial property matters but also with all matters related to companies, the Commercial Register and competition.
Portuguese commercial courts are considered to be specialised within the civil system but do not have judges specialised only in industrial property.
The commercial courts, due to the scope of matters that they have to decide, have a backlog of cases and delays in the giving of timely decisions, namely in industrial property proceedings. For instance, all matters related to bankruptcy of companies should be decided more speedily than IP matters.
Notwithstanding the fact that Portuguese judges do not have specific training in IP matters, commercial courts usually give well-reasoned decisions.
Presently, there are established in Portugal only two Commercial Courts (one in Lisbon and another one in Vila Nova de Gaia, near Porto). If the owner of a trade mark wishes to enforce its trade mark rights outside these areas he will have to enforce such rights at the Civil Court of the place of the infringement
As above, the Lisbon Court of Commerce is responsible for deciding appeals against all the decisions of the INPI.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

Given the fact that Portugal is a civil law country, the courts are not bound by the opinions of other national courts that have handed down decisions in similar cases. However, decisions from other national or foreign courts in similar cases may be referred to and are considered to be relevant.
When implementing foreign court decisions in Portugal, under the Portuguese Civil Procedure Code rules, they must be subject to an exequatur procedure.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

The courts can deal with infringement and invalidity simultaneously. However, in principle, invalidity actions are filed, at first instance, at the INPI through the opposition procedure. If one of the parties does not accept the decision issued by the INPI they may appeal to the Lisbon Court of Commerce.
In relation to infringements, the Portuguese legal system makes provision for filing a judicial action against infringements of private industrial property rights through either the civil or criminal courts, stipulating in each case different sanctions.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

Parties must be represented in court by a lawyer. Representation before the INPI or the OHIM may be conducted either by a lawyer, or by authorised IP practitioners.

2.6 What is the language of the proceedings? Is there a choice of language?

All proceedings in Portugal, either at the INPI, or at the Portuguese courts must be conducted in Portuguese. There is no choice of language at any level. For foreign witnesses in court their statements may be given in any language, but a Portuguese translator must be appointed.

3. SUBSTANTIVE LAW

3.1 To what extent are unregistered trade marks protected in your country’s laws?

Unregistered trade marks have a priority right of six months to be filed under article 227 of the Portuguese Industrial Property Code. Such article states that any person who uses a free or unregistered mark for a period not exceeding six months shall enjoy, during this period, a right of priority for filing the registration of it and may oppose applications filed by others during such period.

3.2 How is trade mark infringement assessed? Does protection extended to translations or to conceptually identical but graphically different trade marks?

Under article 258 of the Portuguese Industrial Property Code, a trade mark registration shall confer on its owner the right to prohibit third parties, without its consent, from using in their economic activity any sign identical, or similar, for the same or similar products or services to those for which the trade mark is registered, or any sign which, owing to the identity or similarity of the signs or the affinity between the products or services, creates in the mind of the consumer a risk of confusion, or a risk of association, between the sign and the trade mark.
The Portuguese IP Code establishes, under article 323, that no-one can:

• totally or partially counterfeit or in any way reproduce a registered trade mark;
• imitate a registered trade mark, as a whole or in any of its characteristics elements;
• use counterfeited or imitated trade marks;
• use, infringe or imitate well-known trade marks registered in Portugal;
• use, even for non identical or similar goods or services, marks that constitute a translation or are identical or similar to prior marks duly registered in Portugal and that enjoy reputation, in Portugal or in the European Union if they are community marks, where the use of the later mark without due cause would take unfair advantage of the distinctive character or the repute of the earlier marks; and
• use, on its products, services, establishment or company, a registered trade mark belonging to another person.

In the past the Portuguese Courts have not extended protection to translations or to conceptually identical but graphically different trade marks.

3.3 Are there other causes of action for trade marks (eg dilution)?

There are other causes of action for trade marks such as dilution, lack of payment of taxes and non-use for five consecutive years.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Under the rules of the Portuguese IP Code a trade mark can be enforced against any other distinctive sign such as domain names, logos, trade names, name or insignia of establishment, appellation of origin or geographical indication and so on.

3.5 On what grounds can a trade mark be invalidated?

According to article 33 of the Portuguese Industrial Property Code, a trade mark may be declared wholly or partially null and void:

• where its subject cannot be protected;
• where mandatory procedures and essential formalities for the grant of the right were not fulfilled; and
• where it does not respect public interests.
• Under article 34, a trade mark may be declared totally or partially annulled if the owner has no right to it, namely:
• if the right does not belong to the owner; or
• if the grant of the right infringes third party rights based on priority or other legal title.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

Under the Portuguese IP Code the mark must be used. If the mark is not used for five consecutive years it may be cancelled for non-use (article 269 IP Code). There are no specific use requirements that must be satisfied to maintain the trade mark registration.
Under Portuguese law (article 256 of the Portuguese Code), an administrative requirement called a ‘declaration of intent to use’ (DIU) must be filed at the Portuguese INPI every five years from the date of grant or renewal, despite the effective use of the mark in the market.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

Several defences might be advanced against an alleged trade mark infringement, namely:

• the mark is no longer in force;
• the mark is not valid (for example because the infringer submits evidence that the mark has been cancelled);
• the trade mark owner was not entitled to the mark;
• the trade mark owner is offering a licence or right and the infringer undertakes to accept a licence;
• evidence that the behaviour adopted did not infringe the mark;
• the infringement occurred outside the geographical jurisdiction of the trade mark registration;
• consent from the trade mark owner (this may include a licence or even a sales contract);
• a declaration from the trade mark owner indicating that the behaviour was not infringing the mark; and
• the trade mark has been granted contrary to law.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

As a general rule, actions concerning the enforcement of intellectual property rights are excluded from antitrust violation.

3.9 Can a court only partially invalidate a trade mark?

A court can partially invalidate a trade mark for some products or services only.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

It is possible to amend a registered trade mark during a lawsuit but only for the list of goods or services covered. The owner can amend the list of goods or services at any time.
However, the owner cannot amend the mark as regards its expression or logo. Any change of its expression or logo implies a new application. In fact, the Portuguese IP Code states, in its article 261, that a mark shall remain unaltered and any change in its elements shall require a new registration. This article excludes simple modifications that do not prejudice the identity of the trade mark and only affects its proportions, the material on which it is stamped, engraved or reproduced or the ink or colour, if the colour is not expressly claimed as one of the characteristics of the trade mark.
A trade mark application can be amended until the final decision of the Portuguese INPI Examiner.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder or for some other reason?

There are several grounds on which an otherwise valid trade mark can be deemed unenforceable such as dilution, lack of payment of taxes and non-use for five consecutive years.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

Under the Portuguese IP Code, a trade mark holder can bring a lawsuit claiming both trade mark infringement and unfair competition based on the same set of facts.
It is also possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered.

4. PARTIES TO LITIGATION

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Since a trade mark is an exclusive right, the right to act against trade mark infringement belongs, in the first instance, to the trade mark owner.
The trade mark holder may, however, transfer or assign his rights, exclusively or in part, to a third party (licensee or distributor) who, in these circumstances, would be entitled to use the trade mark and act against any unauthorised use.
A licensee must be registered at the INPI to be able to sue and such right must be expressly stated in the licence agreement.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

Under the Portuguese Civil Procedure Code, any person may bring a lawsuit to obtain a declaratory judgment on non-infringement. For this purpose, the party needs only to present the facts and to justify the purpose of the proceedings.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Any person or company not respecting the trade mark rights of another person or company can be sued. Even company directors may be sued where there is strong evidence that they are responsible for any infringement.
If evidence is presented that a certain person induced another party to infringe a trade mark, despite not being the person who directly committed the infringement, this person may also be held responsible for an infringement offence (as the moral author).

4.4 Is it possible to add or subtract parties during litigation?

Yes. The Portuguese Civil Procedure Code allows addition or subtraction of parties during litigation.

5. ENFORCEMENT OPTIONS

5.1 What opinions are open to a trade mark holder when seeking to enforce its rights in your country?

Depending upon the nature of the infringement under the Portuguese IP Code, our legal system gives the possibility of filing judicial actions against infringements of industrial property rights through either civil or criminal proceedings, providing in each case different sanctions.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Yes. As for criminal proceedings, the Portuguese IP Code includes provisions relating to criminal offences (namely infringements of the exclusive rights conferred by a patent, utility model or topographies of semiconductors products, infringement of the exclusive rights conferred by designs and models, counterfeiting, imitation and illegal use of a trade mark) and other unlawful acts (namely unfair competition), which are punished by law with prison sentences or fines, respectively.

5.3 Are border measures available?

Border measures are available under Portuguese law. Also, European Union Regulation 1383/2003, which provides for such measures, applies directly in Portugal.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

Under Portuguese law and practice the Portuguese Courts do not grant cross-border or extra-territorial injunctions in relation to trade marks.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

In Portugal we do not have any practice in these kinds of procedures. We have not found any Portuguese jurisprudence as regards this issue.
Most probably, in the near future, Portuguese courts will be confronted with these procedures. It is unlikely that the blocking effect of this duplication of actions between two different legal systems will be recognised in Portugal soon.
Given the independence of the Portuguese legal system, the Portuguese courts should not, except in very particular cases, like extradition of a criminal, decline jurisdiction in favour of another European court.
Torpedo actions are, in fact, under Portuguese civil procedure law, connected with two possible situations:
1) lis pendens (commonly referred to as litispendência) – ie the duplication of the same actions in respect of the same parties, cause of action and remedy sought; or
2) a decisive question being tried in another matter (commonly referred to as questão prejudicial) – ie a case where the outcome of one action depends on the judgment of a specific issue being decided in another action.
These two situations give rise to different remedies. In a lis pendens situation, the rules provide that a court, other than the court first seized, must decline jurisdiction in favour of the court first seized. It is important to note that this issue must be analysed under Council Regulation EC 44/2001. These rules apply since the question is one between the courts of two member states.
The application of these rules is important since Portuguese law would otherwise consider a foreign court action irrelevant and proceed to hear the same action. In practical terms, it must consider the foreign action under article 27 of EC Regulation 44/01. The effect of this provision is quite similar to Portuguese domestic law: the ‘second’ court must decline jurisdiction in favour of the ‘first’ court. There are, however, some differences that must be taken into account under the domestic law: the ‘court first seized’ is determined under the Regulation by reference to the provisions of article 30, ie: the first court to receive the action (with some modifications) while under Portuguese law, the criteria is the first court to summon the defendant.
In the second situation, where a question is being decided in another action, notice may be given to a judge determining a certain case (the ‘dependant proceeding’) that, in another action (the ‘decisive proceeding’), a question having direct influence on the outcome of the ‘dependant proceedings’ is being decided. In this situation, Portuguese law does not require that jurisdiction be declined. The judge of the ‘dependant proceedings’ may stay those proceedings awaiting the decision of the ‘question’ in the ‘decisive proceeding’. There is no requirement that the ‘decisive proceedings’ be lodged first as a condition for suspending the ‘dependant proceedings’. This is a power given to the judge and not an automatic consequence although this power is not totally discretionary. If the judge is convinced that the dependency exists, unless he feels that the ‘decisive proceedings’ were abusively lodged in an attempt to stay his action or that the suspension is not practical (eg the ‘dependant proceedings’ are to be concluded shortly), he must stay his action, await the decision of the ‘decisive proceedings’ and consider this result in his own case.
Please note that article 28 of EC Regulation 44/2001 – ‘related actions’ – addresses a situation which is apparently similar, although we consider that the notion of ‘related proceedings’ adopted therein is even wider since it covers cases which ‘are so closely connected that it is expedient to hear and determine them together and avoid the risk of irreconcilable judgments resulting from separate proceedings’. The remedy provided in article 28.1 is similar to provisions of Portuguese law and a judge is bound by these.
The notion of lis pendens is defined in Portuguese law as a complete and full duplication of an action in all its aspects, ie the same parties, same cause of action and type of relief sought.
Given this, a potential action lodged first in another European country seeking ‘negative declaration relief’ and not the full determination of all issues in dispute is unlikely to be considered the same action (ie duplication). The ‘main question’ in the Portuguese courts to be determined in the case of trade mark infringement would be one regarding the ownership of the trade mark and the consequence liability of the infringer. This is why we cannot exclude the argument that this is not a typical lis pendens matter. However, formally, the actions are different. It is likely therefore that the Portuguese courts will see this case, not as a duplication of the same cause of action requiring it to decline jurisdiction, but as a case falling within situation (2) above giving rise to a stay of the Portuguese action (awaiting the foreign court decision) as a remedy to avoid irreconcilable judgments.
It is important to consider, however, whether a Portuguese judge would order the stay of his action – as described above – should negative declaratory proceedings be lodged abroad. It is almost certain that he would if the action is lodged abroad before the Portuguese one. The question of trade mark ownership and consequent liability of the infringer is likely to be considered a ‘decisive question’ to the proposed action in Portugal. The judge would be of the view that there is a threat of irreconcilable decisions and treat the foreign action as a legitimate action lodged first in a court with jurisdiction connected to the matter and proceed to stay the Portuguese action.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a trade mark invalid?

The Portuguese IP Code expressly recognises, in articles 48, 49 and 50, the availability of ADR to resolve industrial property matters, namely trade mark disputes.
On the other hand, the Portuguese Arbitration Law establishes that ‘any dispute relating to disposable rights that has not been exclusively submitted by a special act to a Court or to compulsory arbitration, may be submitted by the parties for decision by arbitrators’.
Under the IP Code, ADR courts may be constituted to consider the same issues which are capable of being submitted to judicial courts. Decisions issued by ADR courts will be recognised and executed by the INPI.

6. PROCEDURE IN CIVIL COURTS

6.1 What is the format of trade mark infringement proceedings?

Parties must provide the courts with their written submissions, and they are obliged to present all their arguments and all written evidence. Thereby, on the exchange of pleadings/statements of case, the court is in possession of all relevant facts (except for evidence to be produced at later stages).
Once the written statements are closed, a preliminary hearing takes place for the following purposes:

• to try to settle the dispute (normally the judge will ask if the parties have discussed this possibility, sometimes he will act as an ‘amicable mediator’; or
• to allow the parties to discuss the case, either where the possibility of the action being dismissed exists or where the judge believes that all relevant information is available and a final decision can be made; to discuss the position of each party and to correct or clarify any possible mistakes or ambiguous aspects of the written pleadings.

The main purpose of this preliminary hearing is for the judge to hand down an interim decision, wherein he considers the case from a formal point of view and decides on any legal question that can be determined at that stage. In addition to this decision, two lists of facts are prepared:

• one containing the facts that are accepted/agreed by both parties or that were not challenged by the defendant; and
• the other containing the facts, in the form of questions that are to be discussed and proved at trial.

This latter list is particularly important, since the final decision on the issues of fact will be made in the form of answers to those questions.
This preliminary hearing is not mandatory under the Portuguese Civil Procedure Code and in many cases does not take place.
After this hearing the parties should file requirements to indicate their proof (witnesses, documents, experts). Then the Judge hears the witnesses in another hearing and takes, or not, the requested experts requested by the parties. The Judge then gives a preliminary decision on the facts and situations that he considers proved either by the witnesses, or by the documents or experts. Finally the Judge gives the final decision in the case.
From this decision an appeal can be made to the Court of Appeals.

6.2 Are disputed issues decided by judge or a jury?

Disputes are decided by a judge.

6.3 To what extent are documents, affidavits, witnesses and/or (court appointed or private) experts used? Is it possible to cross- examine witness?

As a general principle, the judge is required to take into account all elements of proof presented by the parties. However, evidence will not be admissible where it has not been the subject of a hearing where the party who opposes it was not present or able to challenge the evidence.
Witness evidence is in general admitted, except in cases where a written document deemed to have full evidential force is required.
Documents in support should be filed together with the written pleading, but they may be filed at later stages and normally right up until the end of the trial. In the latter case the court may fine the party presenting late documents, unless it can show it only had access to the document at a late stage.
Legal and technical expert opinions can be filed at any stage of the proceedings.
Foreign decisions regarding private rights may serve as elements of proof before a Portuguese court. The judge has a discretionary power to decide on the value of this evidence.
Despite the existence of documents (when considered not to have full evidential strength), witnesses evidence is normally given and tends to be considered the most relevant form of evidence. The evidential value of witness hearings is left to the appreciation of the judges. Witnesses are required to be mentally and physically able to testify. Any spouses, partners or ex-spouses cannot be forced to testify in cases involving their other spouse or partner. In the same way, parents cannot be forced to stand as witnesses in cases involving their descendents or adopted children’s and vice versa. Individuals bound by professional confidentiality /privilege or state secrecy may be also deposed as witnesses.
There are limits to the number of witnesses that can be called by each party (generally 20) and normally each party may only have up to five witnesses giving evidence on the same fact.
Witnesses are expected to give evidence on their own knowledge. At the end of each testimony, the counterparty attorney is entitled to question the witness in connection with the evidence given during the testimony. Witnesses may be confronted with documents on the file and may use their own documents, provided that they do not read out answers.
Besides the cross-examination, the counterparty may also: impeach the witness at the beginning of the deposition; challenge the witness at the end of the testimony; allege the facts or present documents to discredit it; or request a direct confrontation with any other witnesses.
Experts may be called to depose as witnesses and the court have discretion as to what weight should be attached to their testimony.
The parties or the judge may request/order expert evidence. When ordered by the court, normally there is only one expert. Anyone may serve as an expert. Where, however, the court determines the expert, it will commonly request relevant professional representative organisations to indicate an expert. In other cases the court maintains its own lists, either delivered by professional organisations or composed by previously nominated experts. If there is a state entity specialised in the field in question, the court will usually ask it to appoint the expert.
Any party may separately request an expert. Whenever a party requests expert evidence and there is more than one expert (the maximum being three) and the parties agree on the identity of the experts chosen, the judge appoints those experts unless he has grounds for believing they are not competent. If the parties cannot agree on the identity of the experts, each party appoints one expert and the judge will appoint a third. The experts prepare a joint report in which they are required to answer the questions raised. Those questions are limited to matters of fact. They may subsequently be called to court in order to provide explanations on the report.
The court, on its own initiative or following a request from one of the parties, may order an inspection of a certain location or a reconstruction of any event relevant to the proceedings.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from losing party?

Despite the admission of all kind of evidence at the Portuguese Courts, survey evidence is not very much used in Portugal. We do not have this kind of tradition. Given this lack of use of surveys we do not know the level of costs to carry out a survey. Under the Portuguese Civil Procedure Rules these costs may be recoverable from the losing party.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings and vice versa?

Evidence obtained for criminal proceedings is admissible in civil proceedings and vice versa.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanism is available for obtaining evidence from an adverse party or from third parties?

Pre-trial disclosure of documents is not permitted in Portugal in the same manner as it is in the common law system.
A party may request the court to order the other party or any other person/entity to provide a certain document. The court may refuse the application where the documents requested are considered irrelevant to providing the fact in issue. The party is required to identify the document to the extent possible and explain how it is relevant to the action.
If the document is not presented and no acceptable justification is given for this, the court applies a fine. The court may also order any measures it deems appropriate in order to obtain the document.
The court may also order, ex officio, the disclosure of documents necessary to establish the truth.
In principle, evidence obtained through discovery in other jurisdictions is admissible in Portugal.
Injunctive relieve is also available in order to secure evidence. Likewise, if there is a risk that the evidence may be destroyed or lost, it is, for example, possible to request the court to hear the witness (even before the case is issued), make an inspection, etc.

6.7 What level of proof is required for establishing infringement or invalidity?

The level of proof required is to demonstrate infringement or invalidity through clear and convincing evidence. For this reason the main evidence is through witnesses, any kind of documents and public certificates attesting, directly or indirectly, to the infringement or invalidity.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Given the current problems faced by the Portuguese judicial system of a shortage of judges, as well as the increased jurisdiction and case load of the commercial courts (eg, with insolvency and bankruptcy proceedings requiring urgent decisions), the efficiency of the commercial courts, as well as of the civil and criminal courts, is facing serious difficulties. Therefore, trade mark infringement proceedings may take from two to five years to be resolved.
Nothing can be done to expedite this process.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The Portuguese Courts are so delayed that the defendant does not need to do anything in order to delay proceedings. Nevertheless the defendant may always try to delay the proceedings by requesting from the court different kinds of things such as the hearing of new witnesses or producing new evidence. The plaintiff cannot do much to avoid such delaying tactics. He can only oppose such requests so that the Judge will not take them into consideration.

7. FINAL REMEDIES

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

All these remedies are duly contemplated in Portuguese law (Industrial Property Code, Civil Procedure Code and Criminal Procedure Code).
Therefore, a final decision in favour of the trade mark holder usually includes injunctive relief under which the infringer is prohibited from further manufacturing, selling, offering, distributing or possessing infringing goods. It can also include, a declaratory ruling that the defendant has to pay monetary remedies (as damages). The court may also order the destruction of infringing goods. A publication of the decision is also possible.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

This is not possible.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

The plaintiff may chose between a reasonable royalty, infringer’s profit or his lost profits. In practice, only the first two options are important, since the requirement for the trade mark owner to prove that he actually suffered loss of profits is quite difficult in Portugal and is usually only met where the trade mark owner can establish that he would have been able to sell his own products instead of the infringer’s products to customers. This fact is often difficult to establish where there are further market competitors besides the trade mark owner and the infringer offering similar products which could have been bought as a substitute or alternative.
In relation to the two other methods, reasonable royalty or infringer’s profit, the first is still the most common method for calculating damages.

8. PRELIMINARY RELIEF

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Preliminary relief is available for a trade mark owner in Portugal. Possible remedies in preliminary proceedings are an injunction to prevent the infringer from manufacturing, selling, offering or distributing infringing goods as well as a claim for information regarding the origin and the distribution channels of the infringing product in the case of an obvious infringement.
A request for a preliminary injunction must be filed with one of the competent courts of the infringer’s premises.
The owner of the mark should indicate briefly its own rights and the existence of the infringement. A third requirement is the so-called ‘urgency’ for the petitioner to obtain preliminary relief. Basically the petitioner has to show that he will suffer severe damage if the injunction is not granted.
After reviewing the merits of the claim the court will notify the infringer to present his defence. If considerable risk exists, the judges might decide to grant the preliminary injunction without hearing the infringer.
Once all the evidence has been considered, the preliminary injunction may or may not be granted. If the preliminary injunction is granted, the plaintiff must file main proceedings to confirm the injunction.
An injunction can be immediately enforced without a security. A judgment under which a preliminary injunction is granted or denied can be appealed to the Court of Appeal.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

Yes. Generally the court will hear the infringer. In some cases, however, if considerable risks exist, the judge might decide to order the injunction without giving prior notice. In these cases, where the injunction is ordered without notice to the defendant, he will be notified to present his defence within 10 days. At this point, the infringer’s defence is attached to the main proceedings.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

Yes. In fact, our civil procedure code foresees the possibility of the plaintiff requesting the court to order that the defendant’s premises are searched and a description of the infringing goods provided or even seized.

8.4 Can the defendant put the validity of a trade mark in issue in preliminary injunction proceedings?

Yes.

8.5 What is the format of preliminary injunction proceedings?

Preliminary injunctions are, by nature, urgent proceedings. The plaintiff must file the action in court, and submit all the relevant evidence. After reviewing the merits of the claim the court will notify the infringer to present his defence. If considerable risk exists, the judges might decide to grant the preliminary injunction without hearing the infringer.
Once all the evidence has been considered, the preliminary injunction may or may not be granted. If the preliminary injunction is granted, the plaintiff must file main proceedings to confirm the injunction.

8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

As a general principle, the judge is required to take into account all elements of proof presented by the parties. However, in preliminary injunction proceedings, experts are generally not used primarily due to the urgency of these types of proceedings.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

It is not necessary to present exhaustive proof. Summary proof of the right claimed in court is sufficient. The parties do, however, have to justify the urgency of the injunction and to show that they will suffer severe damage if the injunction is not granted.

8.8 How long do preliminary injunction proceedings typically last?

Normally between six and nine months in total. But sometimes, depending on the complexity of the matter or court delays, they may take much longer.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

Yes.

9. APPEAL PROCEDURE

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

Appeals may be filed either in the administrative phase of the trade mark application, or at a later stage, to protect the rights of the trade mark holder.
Preliminary injunction proceedings may also be subject to appeal, as well as judgments of the civil and criminal courts.
The Lisbon Court of Commerce is the competent authority to decide on appeals against decisions by the Portuguese IP Office to grant or refuse any industrial property rights. In these circumstances, decisions of the Lisbon Court of Commerce may be subject to (only one) appeal to the Tribunal da Relação de Lisboa (2nd instance court).

9.2 How long do appeal proceedings typically last?

Depending on the appeal being made, proceedings are likely to last between six months and one year, but depending on the complexity of the matter or court delays they may take much longer.

10. LITIGATION COSTS

10.1 What level of costs should one expect to incur to take a case through the first instance, preliminary injunction proceedings and/or appeal proceedings?

Payments of court fees depend only on the initial value of the claim and therefore can be estimated by the parties according to a legal table. Court fees are due at distinct moments of the proceedings: part is paid at the beginning of the proceedings, another part before the hearings and the remainder at the end, upon notification by the court.
Judicial costs comprise the ‘justice fee’ and judicial expenses.

10.2 Are costs recoverable from the losing party?

The parties bear their own legal costs. However, at the end of the action the successful party is entitled to collect these from the losing party, with the exception of the costs incurred in connection with the fees of legal advisors. If both parties have partially succeeded in their claims, the costs are split according to the percentage of their success.

11. FORTHCOMING LEGISLATION

11.1 What are the important developing and emerging trends in your country’s trade mark law?

Not applicable.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

• Implementation of internal measures in accordance with the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of Industrial Property Rights);
• Definition of a general system of cooperation and exchange of information between the relevant authorities.

12. USEFUL REFERENCES

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

Authors/useful works
Cruz, Justino e Cruz, Jorge, Código da Propriedade Industrial, 2ª edição, Arnado, Coimbra, 1983
Moreira Rato, Gonçalo, La protection des marques notoires et de haute renommée au Portugal, Faculté de Droit de Strasbourg, 1988 ;
Oliveira Ascensão, José, Direito Comercial (Lições), II (Direito Industrial), AAFDL, Lisboa, 1988;
Cruz, Jorge, Comentários ao Código da Propriedade Industrial de 1995, Lisboa, 1995;
Cruz, Jorge, Sugestões para a Revisão do Código da Propriedade Industrial, Lisboa, 1996;
Olavo, Carlos, Propriedade Industrial, Almedina, Coimbra, 1997;
Couto Gonçalves, Luís, Função Distintiva da Marca, Almedina, Coimbra, 1999;
Couto Gonçalves, Luís, Direito de Marcas, Almedina, Coimbra, 2003;
Mota Maia, José, Propriedade Industrial, Vol. I, Almedina, Coimbra, 2003;
Olavo, Carlos, Propriedade Industrial, Vol. I, Almedina, Coimbra, 2005;
Moreira Rato, Gonçalo, World Trade Mark Law Report - Portugal, Globe, London, 2005;
Moreira Rato, Gonçalo, Wine Marks in Portugal in Brands in the Boardroom, IAM, Globe, 2006
Moreira Rato, Gonçalo, A new approach to generic marks in Portugal in Brands in the Boardroom, IAM, Globe, 2007
Moreira Rato, Gonçalo, World Trade Mark Yearbook - Portugal, Globe, London, 2007.

Sites
www.inpi.pt