The enforcement of Industrial Property Rights (IP rights) is essential for proprietors to see that the efforts and investments made on researching and developing their invention, design or distinctive sign and on seeking its protection as a Patent/Utility Model, Design, Trademark or other registration have paid off.

It is up to IP right proprietors to play the leading role in the fight against infringement of their rights.

 

 

Strategies for dissuading IP infringement

  • - First and foremost, it is desirable that the Application be properly filed and monitored so as to ensure that, upon its protection/grant, the right is lawfully strong.

A wise choice between a Patent and a Utility Model for protecting an invention, a well-written Patent featuring well-designed claims, a Design or a Trademark Application cleverly filed and well registered may alone discourage third parties from infringing said IP rights.

 

  • Not all IP right infringements are deliberate; so, marking the right(s) on the respective good(s) can also work as a dissuasive factor.

In Portugal, as in many other countries, the expressions and symbols [1] that can be used for marking/identifying protected goods while the IP right is in force are set forth by law.

 

 

Monitoring competition

  • It is crucial that IP right proprietors keep under constant surveillance their competitors as well as what is happening on the markets where they enjoy exclusive protection and sell their goods or provide their services, so as to detect as early as possible potential infringements of their rights.

IP right proprietors can share information on their goods and on their rights with the official bodies responsible for the enforcement of IP rights. Said sharing is particularly important for avoiding the import of counterfeit goods.

 

  • It is also important that proprietors monitor the IP right Applications filed by their competitors and/or within the fields and jurisdictions of their interest, so that they may be able to timely take action, should they become aware that rights, which may have areas of overlap with their own rights or of technology fields which are of public domain or already protected, might be allowed to be registered/granted (or have already been registered).

 

A.G. da Cunha Ferreira can monitor for you the Applications/rights in the jurisdictions and fields of your interest as well as the activities of your Industrial Property competitors and can alert you if applications filed within the scope of your right or within scopes which are of public domain are detected, so that you can timely oppose to the registration/grant of same.

 

Monitoring Portuguese and Community Designs as well as Portuguese and European Union Trademarks is crucial for you to prevent the grant/registration of rights partially coinciding with yours, as the examination of Applications by the competent bodies does not cover all grounds for refusal.

 

The Intellectual Property Official Agents (AOPIs - IP Official Agents) of A.G. da Cunha Ferreira may on your behalf appeal against registration/grant of Designs or Trademarks (or others) which should not have been registered/granted.

 

 

When a potential IP infringement is detected

  • Following the detection of a possible infringement of your IP right, first step shall be to assess the scope and validity of your IP right.

It is usually the IP Official Agents who draft the Applications, in particular the claims, so they are especially qualified for providing advice on these matters.

 

  • Second step shall be to assess and confirm whether the allegedly infringing right falls within the scope of your right. The input of the IP Official Agents in this assessment can also be very important.

 

 

Checklist

 

  • Seek for advice from Industrial Property professionals before filing your Industrial Property Applications so as to obtain lawfully strong IP rights;
  • Identify/mark your IP rights on your protected goods;
  • Keep under surveillance the relevant markets and the activities of the competition in order to detect as early as possible potential infringements of your IP rights;
  • Ensure the detection of Applications/rights of your competitors and/or within the fields of your interest which may have areas of overlap with your own rights and take action against registration of the same. The Industrial Property experts can undertake said tasks for you;
  • Once a potential infringement has been detected, seek advice from Industrial Property experts in order to assess the scope and validity of your IP right and whether the confrontation of the allegedly infringing right with the scope of your IP right confirms a situation of infringement.

 

 

Count on us,
A.G. da Cunha Ferreira

 

 

 

[1] In Portugal the expressions/symbols that can be used are:
“Patenteado”, “Patente n.°” or “Pat n.º” for Patents
“Modelo de Utilidade n.°“ or “MU n.º” for Utility Models;
“Desenho ou Modelo n.º” or “DM n.º” for Designs;
“Marca Registada”, “M. R.” or ® for Trademarks;
“Logotipo Registado”, “Log. Registado” or “LR” for Logotypes;
“Denominação de Origem Registada” or “DO” for Appellations of Origin;
“Indicação Geográfica Registada” or “IGH” for Geographical Indications.

13 November 2020