Portugal Implements the IP Enforcement Directive

Portuguese Law 16/2008 (published
on 1st April, 2008) enacted
European Directive 2004/48/CE
relating to the enforcement of IP
rights and amended the Authorship and
Neighbouring Rights Code (Authorship
Code) and the Industrial Property Code
(IP Code).

The main amendments introduced by
Law 16/2008 are:

a) New measures for collecting and
preserving evidence whereby the
interested party may request that the
opposing party or third parties produce
any evidence within their control
confirming the violation of IP rights,
provided that there is sufficient indication
of such a violation. For commercial-scale
infringements, this will extend to banking,
financial, accounting and commercial
documents within the opposing party’s
control.

There are also new measures allowing
evidence to be obtained before judgment
of the merits of the case (in some cases,
without the opposing party even being
heard), if there is sufficient reason to
suspect that an IP right has been violated
or seriously damaged in circumstances
where it would be difficult to remedy
such damage.

b) New interlocutory and pre-emptive
measures whereby, on request, the
competent authorities may grant an
interlocutory injunction in order to
prevent imminent or continued violation
of IP rights and assure that, in the case of
continued violation, guarantees to
compensate the holder of the IP rights are
provided.

La nueva ley lusa
16/2008, de 1 de
diciembre, es la
transposición de la
Directiva Europea
2004/48/CE relativa al
respeto de los
derechos de la
propiedad intelectual,
la modificación de los
códigos de autor y de
la propiedad industrial.
Los letrados Cesar
Bessa Monteiro (jr) y
Ricardo Henriques, de
ABBC, explican en este
artí­culo que las
enmiendas
presentadas por esta
nueva ley están
relacionadas con
formas para recoger y
preservar pruebas y
medidas cautelares
entre otros aspectos.
Concluyen que estas
medidas suponen un
paso importante para
mejorar la defensa de
los derechos de la
propiedad intelectual
en Portugal.

Moreover, the competent authorities
may order the pre-emptive seizure or
delivery of goods that allegedly violate an
IP right, in order to stop the goods from
entering the market.

As regards the commercial-scale
violation of IP rights, the competent
authorities may order a pre-emptive
seizure of the infringing party's movable
and immovable property, if the damaged
party is able to show that it will be
difficult for him to obtain compensation
for his loss and damage.

c) New provisions for the calculation
of damages payable by the infringing
party. In determining the amount of the
compensation, the competent authority
must consider the negative economic
consequences (including the costs
incurred in enforcing the IP right as well
as lost profits and consequential loss
suffered by the damaged party), unfair
profits made by the infringing party, and
in some cases, moral prejudice. In
appropriate cases, a lump sum may be
awarded on the basis of, for example, the
royalties or fees that would have been
payable if the infringing party had
requested authorisation to use the IP right
in question.

d) New information obligation
whereby the damaged party has the right
to information concerning the origin of
the products and services that violate the
IP right and their distribution networks.
This would include, for example, names
and addresses of producers, distributors,
wholesalers, suppliers and retailers,
information as to the quantity of product
ordered, produced, distributed and
received, and information concerning the
price obtained for the products or
services.

This information would have to be
provided by the infringing party and/or
any parties who were found in possession
of goods, or found rendering or using
services, that violated IP rights on a
commercial scale, as well as any parties
who had, according to the infringing
party, participated in the production or
distribution of its products or services.

By way of conclusion, we believe that
the above measures are an important step
in the improvement of the defence of IP
rights in Portugal. However, there is still a
lot to be done. For example, there are
procedural issues that may complicate the
effective implementation of the preemptive
and evidence-collecting measures
referred to above. Moreover, the backlog
at the Portuguese Courts will make it very
difficult to obtain timely results. Whilst,
particularly as regards the amount of
compensation for damages, the new rules
definitely constitute a breakthrough, we
are still sceptical, given the general
practice in Portuguese Courts, as to how
well judges will accept and apply them.

César Bessa Monteiro (jr) is a senior
associate in the Intellectual Property team
at ABBC and can be reached via
c.monteiro@abbc.pt, Ricardo Henriques is
an senior associate at ABBC and can be
reached via r.henriques@abbc.pt
Portugal Implements the IP Enforcement Directive

Garcia-Sicilia

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