Intellectual property is an important component of any business. The company’s trademark identifies the company in the market and is an important asset that must be preserved. Inventions, utility models, computer programs, and others are often the basis of the company’s business.

The law recognizes and protects two types of intellectual rights: (i) «industrial property rights» (propriedade industrial), which cover utility patents, designs and trademarks and (ii) «copyrights» (direitos de autor), which protect literary, artistic and musical works, multimedia creations, videogames and phonograms, computer software and databases.

Portuguese legislation on intellectual property and industrial property is codified in two main codes, the Industrial Property Code (Código da Propriedade Industrial) and the Intellectual Property Code (Código do Direito de Autor e dos Direitos Conexos), which follow European directives and guarantee the same protection as most EU countries.

Portugal is a member of the World Intellectual Property Organisation and a party to several international agreements, including the Berne Convention, the Universal Copyright Convention, the European Patent Convention and the Patent Cooperation Treaty.

Copyright grants its owner the right to exploit literary and artistic works, music, movies and multimedia creations, software, databases, television and radio works, phonograms and videogames, advertising slogans and architecture and engineering works.

Authors are also granted the so-called “moral” or “personal” rights over their works, i.e., the right to protect the work or the right to be recognised as the author of her/his works. Personal rights cannot be assigned or transferred, even with the author’s consent. Personal rights cannot be waived and do not lapse with the passing of time.

Economic rights can be assigned by the author or the copyright owner.

Copyright does not require an official registration. Protection is automatic and acquired immediately after the work completion. However, it is possible and sometimes advisable to register at Inspeção-Geral das Atividades Culturais (IGAC) to prove the authorship of the work.

National laws ensure protection within the country. International treaties and conventions (such as the Berne Convention) extend copyright protection beyond Portuguese borders.

Copyright owners may delegate the managing right of the work to a share-divided, collective management corporation, such as the Portuguese Authors’ Association (Sociedade Portuguesa de Autores) and the Portuguese Software Producers’ Association (ASSOFT).

Copyright lasts 70 years after the author’s death, even if the original work was published or came up after the author’s death. When the copyright’s term expires, the work enters the public domain and can be used freely. Falling in the public domain does not affect the moral rights, which are protected indefinitely.

Databases are protected as copyright when they are considered intellectual creations as defined in Decree-Law 122/2000 of July 4, which implemented Directive 96/9/EC on the legal protection of databases. When a database is not protected by copyrights, its owner benefits from special protection when there has been a substantial investment in obtaining, verifying or presenting the database contents. The exclusivity lasts for 15 years, starting from the end of the calendar year in which the database was created.

The Portuguese Intellectual Property Code (Código de Direito de Autor) ensures protection against civil, criminal, and administrative offenses concerning copyright. Regarding civil protection, the Intellectual Property Court has jurisdiction, and the owners of intellectual property rights can take legal action to:

• Recognize copyright in the event of a dispute with third parties;
• Put an end to the illegitimate use by third parties of the respective rights, as well as demand compensation for damages and profits gained by the infringer;
• Appeal decisions regarding the registration of literary and artistic works by the General Inspection of Cultural Activities; and
• Seek protective measures to prevent imminent infringements or to prohibit ongoing infringements.

In criminal matters, the law permits the court to order the seizure of the movable and immovable property of the alleged offender, including their bank account balances. The court may also order access to banking or commercial data, and information concerning the offender.

Without prejudice to the protective measures set out in procedural law, the intellectual property rights owner may request from the police and administrative authorities of the location where the rights are violated, the immediate suspension of the performance, recitation, execution, or any other form of exhibition of the protected work occurring without proper authorization, as well as the seizure of the proceeds of the infringing practice.

The criminal protection of copyright, which falls under the jurisdiction of the criminal courts, addresses several practices as criminal offenses:

• Misuse: using a work without the author's authorization.
• Counterfeiting: presenting a work as one's own creation.
• Violation of moral rights: infringement of the right to paternity and the right to the genuineness or integrity of the work.
• Use of a counterfeit or usurped work: commercialization or distribution to the public, in any form, of a usurped or counterfeit work.

Except for violations of moral rights, other offenses are public offenses, meaning that criminal proceedings may be started ex officio and do not require a complaint from the owner of the intellectual property rights.

Regarding administrative offenses, certain practices are classified as serious economic offenses (Article 205 of the Intellectual Property Code):

• Failure of importers, manufacturers, and sellers of material supports for phonographic and videographic works to report quantities imported, manufactured, and sold.
• Failure by manufacturers and duplicators of phonograms and videograms to report quantities they press or duplicate.
• Unauthorised communication to the public of previously commercially released phonograms and performances incorporated therein, without the authorization of the respective author, producer, or their representatives, either via public performance or audiovisual broadcasting.
• Unauthorized communication to the public of videograms through television broadcasts or retransmissions, as well as works and performances incorporated therein, without the necessary authorizations.

Failure to properly identify the author of the work by name, pseudonym, or other identifying signs adopted by them, or the works the adaptation is based on, constitutes a minor economic offense.

The General Inspection of Cultural Activities is responsible for processing administrative offenses, and the respective inspector-general is charged with imposing fines (Article 206 of the Intellectual Property Code). The Legal Framework for Economic Administrative Offenses (Regime Jurídico das Contraordenações Económicas) applies to the sanctioning framework.

Accessory sanctions may also be applied, including (Article 210-J of the Intellectual Property Code):

•  Forfeiture of seized assets in favour of the State.
• Temporary ban on carrying out an activity.
• Temporary deprivation of the offender's right to participate in fairs or markets.

In Portugal, Decree-Law 252/94 of 20 October, which transposed Directive 91/250/EEC, establishes the rules applicable to the legal protection of software (computer programs) through the remission of this protection to the copyright regime. Furthermore, since 1991, we can count on the Portuguese Software Association (ASSOFT), which is an entity for the collective management of copyright and related rights regarding Software products.

To be protected, computer programs cannot be copied from another program. Software gets the same legal protection as literary works. This means that the software owner has the powers that come with the economic exploitation of the work, including the right to use or copy the software distribution by any means and in any form, dispose of the software (licensing or provide the right to use software) and modify it in any way.

The owner of the software may put into circulation originals or copies of the program and has the right to lease the copies. The copyright owner can also register the program at the literary property register.
Software created by a company is presumed to be collective work. When software is created by an employee during the performance of her/his duties or under the instructions of the employer, the program belongs to the employer unless otherwise explicitly stipulated.

A person who has the right to use a copy of the software can use the program for various purposes, such as creating a backup copy in connection with such use or studying and testing the program’s functioning.

The licensee or another person with the right to use the program or acting on behalf of a person authorised to do so can decompile parts of a program to ensure the interoperability of that software with other programs.

The unauthorised economic exploitation of software by an individual or legal person might be considered a violation of the Software Protection Law and is considered a criminal offence under the Cybercrime Law.

Personal rights, which belong to the author of the software, give him/her the right to mention the software’s name and the right to claim authorship.

Patents ensure exclusive use and the right to prevent others from manufacturing, offering or storing an invention that has industrial use without the owner’s consent, even if the invention is applied to a product consisting of or containing biological material or to a process that creates, treats or uses biological material. Inventions may include products, processes and new processes for obtaining already known products and substances.

The invention must be a novelty, destined for industrial use and cannot be obvious to a person with average knowledge in the technical field in question.

Discoveries, scientific theories and mathematical methods, materials or substances existing in nature, nuclear materials, aesthetic creations, schemes, rules and methods for intellectual pursuits, games or businesses, and information presentations are not patentable.

Inventions contrary to law, public policy, public health and best practices cannot be patented.

The duration of a patent is 20 years following the application date. The patent validity can be shortened if the annual fees are not paid. For pharmaceutical and plant protection products, it is possible to apply for a supplementary protection certificate, which extends the patent protection for an additional five years.

The patentholder must exploit the patented invention. The exploitation has to begin within four years, counting from the application date or three years, counting from the date of the patent grant, whichever is longer. Patents may be licensed or sold.

Portuguese patents must be registered at the National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial, INPI).

European patents, which are valid in the European Patent Convention contracting States, must be registered at the European Patent Office or at INPI. Patents last for 20 years. European patents are valid in the 26 European Union countries (except for Spain and Croatia) without the need for national verification and the payment of any fees in the contracting countries. The European Patent Office is responsible for granting European patents. The application must be in one of its official languages: English, French or German.

The World Intellectual Property Organisation is responsible for granting and protecting international patents in more than 150 countries. The applicant must be a national or resident of a Patent Cooperation Treaty contracting State. National laws govern the registration process in each country.

Utility models are product or procedure inventions with industrial applicability and cannot cover biological materials. Utility models have a simplified approval procedure and are subject to examination by INPI, the entity responsible for granting and registering industrial property rights in Portugal.

Utility models are subject to the same object constraints as patents. Utility model rights last six years from the application date. The protection period can be extended for a maximum of 10 years from the day of application.

The fees charged for the registration and maintenance of utility models are generally lower than those charged for the registration and maintenance of patents.

It is also possible to protect an invention without gathering all the documentation required for that purpose. Portuguese law allows filing a provisional patent application (Pedido Provisório de Patente, or PPP) by simply submitting a document describing the invention in detail. After that, there is a period of 12 months to convert the provisional application into a definitive patent application.

It is possible to apply online for patents, register utility models and apply for provisional patents at https://inpi.justica.gov.pt/.

Owners of designs of the product’s shape, lines, contour, colours, textures or materials have the exclusive right to use it and to prevent its use by unauthorized third parties.

To be protected designs do not need to be entirely a novelty but must include at least a new feature or layout of already used elements but presented differently.

Rights over registered designs last five years following the application date and can be renewed for consecutive equal periods of time up to a maximum of 25 years. When registered, the design is protected by copyrights since its creation date.

Registration is made at INPI or at the European Union Intellectual Property Office. The application procedure is simple, and it is required to pay a single set of fees. Registration covers all Member States.

However, once registered, a design cannot be altered, not even by the owner. It can only be enlarged or reduced.

 The registration of alterations to the essential characteristics of a design, provided that they are new and unique, requires the registration of a new design.

Unregistered Community designs are automatically protected for a period of three years following the design’s publication within the EU. Protection allows the owner to prevent commercial use of the design by third parties.

The World Intellectual Property Organisation’s international registration means the acknowledgement of intellectual property rights in 65 countries. The applicant must be a national or live or have an established business in an EU country. Nevertheless, national laws regulate the registration in each country.

Trademarks are distinguishing marks used in trade to identify products and services. Trademarks grant their holders a 10-year exclusive right of use that is partially or fully renewable for equal periods of time, as well as the right to represent the trademark graphically - through words, names of persons, drawings, letters, numbers and sounds, the form of the product or respective packaging –, distinguishing the products and services. Trademarks may also consist of advertising slogans for products or services.

Marks must have a distinctive character and be represented in a way that third parties can clearly and precisely determine the protected object. Marks representing the usual name of a product or service or the ones that have descriptive elements are not accepted as trademarks.

The trademark should be registered at the INPI, and its protection is limited to the national territory.

Trademark protection in the EU can be obtained by registration of an EU trademark at the European Union Intellectual Property Office. The registration covers the territory of all Member States, and any natural or legal entity from any country in the world may apply for the registration.

International trademark registration enables protection in more than 100 countries by filling out an application. The applicant must have an established business, be a national or live in a member country part of the Madrid System (International Trademark Registration Treaty). However, national laws govern the registration in each country. Therefore, the same application may be accepted in some countries and rejected in others.

Once the trademark products are made available in the European Economic Area by the owner or with her/his consent, the owner's rights are considered expired. The trademark holder cannot disallow its use on the products. Furthermore, the trademark has to be used for five consecutive years; if not, the registration expires.

In Portugal, it is possible to register trademarks online at https://inpi.justica.gov.pt/.

Well-known and prestigious trademarks enjoy a special degree of protection, even if they have not been registered. A trademark application will be refused not only if it is a reproduction or imitation of a well-known Portuguese trademark but also if it is applied to identical or similar products or services that could be mistaken for a well-known trademark. A trademark application will also be refused if it is identical or similar to another previously well-known trademark in Portugal or the European Union, especially when it takes unfair advantage of the distinctive character or prestige of the other trademark, or if it could jeopardize that trademark, even if associated with different products or services.

The owner of a trademark registration holds the right of ownership and exclusivity regarding the goods or services it is intended to signify. This enables the owner to prevent third parties from using signs similar to their own on goods or services that are identical or similar to those covered by the registered trademark. If a trademark registration consists of a reproduction or imitation of another, previously registered trademark, signalling identical or similar goods or services, and is likely to mislead or confuse the average consumer, it must be refused.

For a trademark to be considered misused or imitated, the following requirements must be met: (Article 238 CPI)

• Priority. The registered trademark must have priority over another. Priority is determined by the date on which the trademark was filed; hence, the trademark whose registration was filed first takes precedence.
• Affinity between products and/or services. Imitation or usurpation requires that both trademarks mark goods and/or services that are identical or similar. Affinity relates to the principle of specialty, expressing protection for the distinctive function of the trademark but only for the goods or services for which the trademark was actually registered. To verify the existence of affinity, it is important to consider whether we are dealing with relations of (i) competition, (ii) substitution, (iii) complementarity, (iv) accessoriness, and (v) derivation.
• Error or confusion. Trademarks must be similar in a way that misleads or confuses the consumer, who can distinguish them only after careful analysis or comparison or understand a risk of association.
• Risk of confusion. Confusion may occur directly when the consumer confuses two brands, thinking they are the same, or indirectly when the consumer considers one brand a modification of another. There is also confusion in a broad sense if the consumer believes that the companies owning the brands have some economic or organizational relationship.
• Risk of Association. The likelihood of confusion includes the likelihood of association, where the consumer considers the sign and the trademark similar, remembering the trademark but not confusing them.
• Graphic, phonetic, visual, and conceptual similarity. Graphic similarity exists when the words are written identically or similarly. Phonetic similarity occurs when the sound resulting from reading the signs is identical or similar. Visual similarity exists when the appearance of the signs is identical or similar. Conceptual similarity arises when the signs express concepts or ideas that are identical or similar.
• Easily mislead or confuse the consumer. Portuguese law requires that the risk of confusion be significant, easily misleading or confusing the consumer. To assess this, one must consider the average consumer, i.e., the consumer without a high level of attention, and determine whether, in the specific case, that consumer would be in error or would become confused.

The National Institute of Industrial Property (INPI) can, on its own motion, refuse trademark registrations based on certain grounds for refusal outlined in the Industrial Property Code. These grounds include the reproduction of a trademark previously registered by someone else for identical goods or services. (Articles 230, 231 e 232 CPI) However, there are grounds for refusal dependent on a prior complaint and cannot be identified ex officio by the INPI.

The owner of a trademark right can also request the cancellation of a trademark registration within ten years from the date the registration was granted, through a reasoned request filed with the INPI. There are no grounds for cancellation if the earlier trademark does not meet the condition of genuine use. (Articles 4, N5, 266 e 263 CPI)

It is important to consider the system of forbearance preclusion, which stipulates that if the owner of a registered trademark, aware of the fact, has tolerated the use of a later registered trademark for five consecutive years, they lose the right to request cancellation of the later trademark or to oppose its use. (Article 261 CPI)

The court with jurisdiction over this type of action is the Intellectual Property Court. Even if the interested party has not appealed against the INPI's decision, they are not barred from bringing an action for a declaration of cancellation of a trademark registration. These rights are not absolute and there are limitations established by law.

Firstly, the owner of a registered trademark cannot prohibit the use of that trademark on products they themselves have marketed or authorized to be marketed within the European economic area. (Article 253 CPI) Despite having trademark registration in their favor, this registration does not allow the owner to prevent third parties from using, in their economic activity, as long as they comply with the rules and honest practices: (i) their own name and address, if the third party is a natural person; (ii) non-distinctive signs or indications that refer to the kind, quality, quantity; (iii) signs or indications that are not distinctive and refer to the kind, quality, quantity, destination, value, geographical origin, time and means of production of the product or provision of the service or other characteristics of the products or services; and (iv) the trademark to identify or refer to products or services as being those of the trademark owner, especially when necessary to indicate the purpose of a product or service. (Article 254 CPI).

Any confidential business information that provides a competitive advantage can be considered a trade secret.

Trade secrets can include know-how, technical knowledge (potentially patentable or not) or business and commercial data such as lists of customers, business plans and manufacturing processes.

Disclosure, acquisition or use of the competitor’s trade secrets, without her/his/its consent, is considered illegal if the information: (i) is secret, meaning that it is not generally known or easily accessible, (ii) has commercial value because of its secrecy and (iii) has been subject to considerable diligence by the person responsible for the information control in order to keep it secret.

It is also unlawful to disclose or use a trade secret when the recipient of information knew or should have known when first hearing about it that such secret had been obtained directly or indirectly from another person who was using or disclosing it illegally.

It is lawful to access a trade secret when that results from an independent discovery, from an employee’s rightful access to the information in accordance with accepted practices or the law. It is also legal to study, disassemble or test a product or object that has been made available to the public or when such access complies with honest commercial practices.

Whenever there is a breach or well-founded fear that others may cause serious damage to the trade secret, the court may, at the request of the interested party, order the appropriate precautionary measures.

In the event of a trade secret breach, the court decision can order the offender to refrain from using or disclosing the trade secret and prohibit the offender from producing, offering, placing on the market, importing, exporting or storing the product of such secret.

When unfair competition, abuse of rights and other legal rules protecting business secrets do not apply or do not offer sufficient protection, it is advisable to enter into a non-disclosure agreement before exchanging confidential and sensitive information to business partners, shareholders, employees, suppliers and customers.

Unlike for patents or trademarks, protection is not time limited. Furthermore, this protection does not involve any formalities with competent authorities, and there is no registration fee, which means that its effect is immediate.

The Industrial Property Code guarantees civil, criminal and administrative offence protection for intellectual property rights.

About civil protection, the Intellectual Property Court also has jurisdiction. As an alternative to resorting to judicial means, the parties can resort to an arbitration court if an arbitration agreement has been signed.

Actions can be brought to:

• Appeal against decisions of the National Institute of Intellectual Property granting or refusing any industrial property right, as well as any other acts affecting industrial property rights;
• Put an end to the illegitimate use by third parties of the respective right, as well as compensation for damages and the infringer's profits; and
• Request protective measures to inhibit imminent infringements or prohibit the continuation of ongoing infringements.

In the case of commercial offences, the law allows the court to order the seizure of the alleged offender's movable and immovable property, including their bank account balances, and the Judge can order the communication of or access to banking or commercial data and information concerning the offender.

The following practices are deemed criminal offences:

• Manufacture of artefacts or products, as well as the use of processes and consequent distribution, in violation of the exclusive patent, utility model or topography of semiconductor products;
• Reproduction or imitation, as well as the exploitation and consequent importation or distribution of registered designs;
• Infringement of name and insignia rights;
• Infringement of the exclusive right to a logo;
• Reproduction or imitation of a designation of origin or geographical indication;
• Obtaining patents, utility models and design registrations in bad faith;
• Registration obtained or maintained through abuse of rights; and
• Registration of a non-existent act or one carried out to conceal the truth.

All these offences are semi-public crimes, i.e. they depend on the holder of the right in question lodging a complaint.

As for administrative offences, very serious economic offences include unfair competition and violation of a protected trade secret. The range of serious economic offences is more extensive and includes:

• Unlawful invocation or use of a reward;
• Preparatory acts which include manufacturing, importing, exporting, acquiring or keeping, for oneself or others, signs constituting names, insignia, logos, designations of origin or registered geographical indications;
• Use of illicit trademarks;
• Improper use of a name, insignia or logo; and
• Invocation or improper use of private rights.

The penalty framework is regulated in the Legal Framework for Economic Administrative Offences.

Relevant legislation

Copyright and Related Rights Code [Portuguese Only]

Industrial Property Code [Portuguese Only]

Industrial Property Table of Fees [Portuguese Only]

Legal Protection of Computer Programs [Portuguese Only]

Forms

Designs and Models Registration Request [Portuguese Only]

Patent and Utility Model Registration Request [Portuguese Only]

Logos and trademarks Registration Request [Portuguese Only]

Additional Protection Certificate Request [Portuguese Only]

Publications

«Why your IP is in safe hands in Portugal» (2019)

«Intelectual Property for Companies» (2015) [Portuguese only]

Important notice

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We are used to working on all aspects of intellectual property law. We act regularly in domestic and cross-border transactions involviong IP rights, including technology transfers, mergers and acquisitions, financings and foreign investments.

We can assist you in all aspects related to IP and technology, including:

• Negotiating IP licensing agreements and technology transfer agreeemnts
• Registration of trademarks
• Preparing and submitting patent applications
• Protecting copyrights and other IP rights
• Handling IP disputes

If you have any question or wish us to provide a budget, please contact us to: whyportugal@macedovitorino.com

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