With the entry into force of the Industrial Property Code approved by Decree-Law 110/2018 of 10 December 2018, the Portuguese Industrial Property Office (IPO) is now competent to rule on nullity and cancellation actions against designs, trademarks, logos, designations of origin, geographical indications and rewards.
However, in the case of patents, supplementary protection certificates, utility models and topographies of semiconductor products, a declaration of nullity or cancellation can still only result from a judicial decision.
Article 34 of the Industrial Property Code results from the transposition of Article 45 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks, the deadline for implementation being 14 January 2023.
For this purpose, the IPO has created the Department of Extinguishment of Rights, which is competent to examine nullity and cancellation actions, as well as revocation actions.
We cannot talk here of a transfer of competence in the strict sense from the court to the IPO, as important amendments have been made in this respect.
One amendment is the removal of the reference to the legitimacy of the Public Prosecutor to bring invalidity proceedings when there are absolute grounds for invalidity.
Another amendment is that unfair competition no longer constitutes grounds for the cancellation of a registration, while bad faith is now considered as a ground.
Also, the evidence accepted in these proceedings by the IPO must consist exclusively of written statements and witness evidence is not permitted, unlike when these actions were heard in court.
Another important change to the Portuguese system is the possibility of requesting proof of use of the earlier mark.
In fact, Article 263 of the Industrial Property Code provides that the owner of a trademark registration against which a cancellation action is filed can request that proof of use of the earlier registered mark be furnished if, on the date of filing of the said action, it has been registered for at least five years. The proof submitted must relate to the five-year period preceding the cancellation action and also to the five-year period preceding the date of the application for registration of the trademark for which cancellation is sought or the date of the priority claimed.
Naturally, this transfer of competence from the court to the IPO has relieved the backlog of cases which had accumulated at the Court of Intellectual Property.
In any case, the court maintains competence to rule on requests for cessation of use of the trademark and requests for payment of compensation for the damages caused by the use of the later mark. In the event that a party wishes to make these requests, it is necessary to file a judicial action at the Court of Intellectual Property, as the IPO is not competent to hear such claims.
