Five steps to follow to protect and enforce your brands in Portuga

 If you have a 'startup' or an already consolidated company and you want to protect your brand against possible infringements in Portugal, there are five measures that you should assess:

anticipate and act quickly

carry out a thorough investigation with the help of a professional surveillance service;

collect evidence of the violation;

work with lawyers specialized in industrial property in order to understand the best possible options and scenarios for an agreement and / or

weigh and anticipate the consequences of litigation both generally and for your business. We explain how to proceed.

The more successful our products and services are, the more exposed we are to trademark infringement. Violations do not always occur, but it is important to be prepared if they do so that our brand equity is not negatively affected.

On the other hand, the sooner you react and follow the recommendations below, the less likely it is that the violation will have serious consequences. Registration per se will not prevent attempts to enter the market with similar signs for similar goods and services: it is necessary to be vigilant and take into account the following basic rules. Therefore, if you sell products or provide services in the Portuguese market and you have a registered trademark to support yourself to defend them, these recommendations will be useful to you.

1. Anticipate and act: prevention

As soon as you notice a possible violation, act quickly. The sooner you detect the possible infringement, the sooner you can enforce your rights and the lower the cost of the actions necessary to put an end to it.

One way to be aware of potential infringements, especially when operating in different territories, is to hire a trademark surveillance service. These services serve to inform you of the filing of new applications for trademarks identical or similar to your registered trademark or for new company names and / or registered domain names that totally or partially include your trademark and cover the same (or similar) goods and services. . In addition, depending on the type of goods and services you offer, it is also possible to hire an online brand surveillance service. This surveillance service provides regular information (weekly or monthly) on the use of brands by third parties, and identifies signs that are identical (or similar) to your brand and associated with the same type of goods and services (or similar to these).

2. Coincidence is a test

Sometimes, the coincidence in the use of a brand is not such ... but it is a deliberate attempt to take advantage of the good reputation that brand has earned in the market. Especially in the opening of new markets, it is not strange that the unauthorized use is intentional, and is directed to make the public believe that there is some association and / or relationship between your brand and the offending company (when it is not directly a impersonation…).

Sometimes, the infringement occurs within the circle of activity of the company itself, and it is, for example, former distributors, agents or even franchisees, who carry out unauthorized registration requests, which can be referred to as bad registrations. faith. It is not surprising that in the distribution network, our former collaborators and partners are reluctant to stop using a brand that has given them considerable benefits. For this reason, we must pay close attention to the contractual relationships that we establish with them, anticipate with the registration in our commercial expansion and, in any case, make it clear at all times that the use of the brand occurs under license, without the licensee (franchisee, agent, distributor, reseller ...) acquire any rights over it.

On the other hand, there are also cases in which the use of a brand that matches ours is merely casual, especially if our brand has low distinctiveness or is in some way related to the products and services we sell. In this case, even if there is no bad faith on the part of the applicant or the user, we must also act to protect our property.

In any case, what is always necessary is to collect as much information as possible about the offender before asserting our rights. Nowadays it is usually easier, since practically all companies have a digital presence. Thus, by means of a simple search on their websites, on their profiles on social networks and in the public registries of companies and brands, very valuable information can be obtained about the offender:

The name of the entity that copies your brand and the place where its headquarters are located;

The identity of its partners;

The form, and the goods and services, in which the infringing sign is used;

If they are holders of other registrations in addition to the detected trademark, and

In some cases, who are your clteeth.

All this information will allow you to correctly assess the impact of the use of the brand and determine what to do next.

3. Obtaining evidence of the infringement

Once the potential infringement of your brand is detected, you must act quickly to prevent it from continuing. As we said, it is urgent to collect as much information as possible during the investigation process in order to substantiate a possible future claim against the infringement of your rights.

For these purposes, you must obtain the certification of tests that prove how, where and since when the infringing sign has been used in the market in relation to the same goods and services as your brand. In Portugal, this evidence can be provided by lawyers or notaries and has proven to be key in supporting requests for precautionary measures or civil lawsuits before the courts.

4. Enforcement strategy: litigation or settlement?

Typically, the enforcement strategy begins by contacting the offending party and negotiating an amicable settlement: in some countries this initial phase is mandatory, but not in Portugal. Still, it is almost always the best option.

This strategy is implemented by sending a request to the other company with a detailed description of the rights that we are trying to enforce and the consequences of not complying with the requirement to "cease use of the trademark." When appropriate, the notification, which is sent by ordinary mail, may also require the withdrawal or waiver of trademark applications / registrations already made. If a response is received from the other party, an agreement can be negotiated that will end the dispute quickly and at relatively low cost.

It must be borne in mind that the agreement is a mutual commitment, even when the other party has acted unlawfully and has violated their rights. In some cases, the offending company will ask for time to phase out its stock by selling it. Of course, it is possible that the company acted in good faith and even obtained a company name or trademark registration for the infringing sign. In that case, it can be proposed to pay the offending company a small sum to cover the costs of applying for a new trademark.

Although it may not seem like it, an agreement that is not fully satisfactory to either party is sometimes the best possible solution in infringement cases in Portugal, especially when the similarities between the signs in question are not obvious and there are doubts as to whether there is or is not a risk of confusion.

On the other hand, trademark litigation in Portugal can last several months or even years, with the consequent negative effect on the trademark and increased legal expenses. Furthermore, even if a lawsuit is won, Portuguese courts tend to be ungenerous in setting compensation for a "simple" trademark infringement. It must also be borne in mind that if you cannot obtain an immediate cessation of the use of the trademark in injunction, the other party could continue to use it until a judgment is issued in the first instance. In other words, the infringing sign may remain on the market for several months, with consequences for its brand that are very difficult to repair, specifically, the dilution of its distinctive character. In this scenario, the pros and cons of not reaching an out-of-court settlement must be weighed very well, no matter how difficult it may seem to reach an agreement with someone who is deliberately infringing our industrial property rights.

5. Legal actions and their effects

If there is no possibility of agreement, then the only viable solution may be to go to court to stop the infringement. In Portugal, the competent court for trademark infringement is the Lisbon Industrial Property Court. Their decisions can be appealed to the Lisbon Court of Appeal, which has recently created a section specialized in industrial property matters.

If we have a registered trademark in force, the possibility of requesting precautionary measures before the Portuguese Industrial Property Court should be considered. If they are successful, a resolution can be obtained within three to four months. It is important to underline that Portuguese procedural law allows requesting precautionary measures even in those cases in which the infringement has been occurring for months. Therefore, you will only have to collect evidence of the infringement and prove to the judge that you are the rightful owner of the trademark.

If the request for precautionary measures is admitted, in most cases the offender will try to compromise and buy time to stop using the offending sign. But suppose no agreement is reached. In that case, you will have to file a civil lawsuit: in total, between a prior hearing and ordinary hearings, it may take between two and three yearss until a resolution is issued in the first instance. The decision of the Industrial Property Court can be appealed to the Lisbon Court of Appeal, which will take between six and ten months to issue a final judgment.