A technology company headquartered in Northern Europe discovered that a former local distributor had registered the firm's core brand names and product identifiers in Portugal – without authorisation. The registrations covered multiple classes under the Nice system and had been filed months after the distribution agreement lapsed. By the time the client engaged Ferraz & Whitmore, the Portuguese registrations had already passed the initial examination stage. The distributor was using them to demand a licence fee and block a planned market re-entry.
IP portfolio recovery in Portugal involving bad-faith registrations proceeds primarily through opposition proceedings and nullity actions filed before the competent intellectual property authority, Instituto Nacional da Propriedade Industrial (INPI, the Portuguese IP Office). The applicant must demonstrate prior use, priority rights, or bad faith at the time of filing. Proceedings can take between twelve and thirty-six months depending on whether the matter is resolved administratively or escalates to the courts.
This case study traces the strategy adopted, the complications encountered, and the transferable lessons it produced for cross-border IP matters involving bad-faith actors in EU jurisdictions.
Client profile and the challenge
The client was a mid-sized technology group with an established brand across five EU markets. It held EU trademark registrations predating the Portuguese filings by several years. However, it had relied on its EU-wide rights without separately registering the marks in Portugal – an omission its former distributor exploited.
The distributor had incorporated a Portuguese entity under Portuguese corporate legislation (CSC) and filed trademark applications covering the client's exact brand name across three Nice classification categories: software products, hardware peripherals, and business services. The timing – filed within weeks of the distribution agreement's expiry – was the clearest indicator of bad faith. The distributor then sent a formal carta de cessação (cease-and-desist letter in Portuguese practice) demanding that the client either pay a substantial one-off licence fee or exit the Portuguese market entirely.
For clients engaged in IP protection across EU member states, related considerations often arise under broader intellectual property law in Portugal, including parallel questions around enforcement and brand management strategy.
The client faced a direct lost-opportunity risk: its planned product launch in Portugal was six weeks away. Delay would mean ceding the market to a competitor already in contact with the distributor. Acting too slowly was not a neutral choice.
Legal strategy: rationale and sequence
The team mapped three parallel tracks. The first was an administrative nullity action at INPI, grounded in bad faith and the client's demonstrably prior EU trademark rights. The second was a precautionary injunction application filed concurrently before the Tribunal da Relação de Lisboa (Lisbon Court of Appeal), targeting any commercial use of the disputed marks pending the outcome of the nullity proceedings. The third was a commercial negotiation channel – kept open deliberately, but calibrated against the litigation timeline to avoid signalling weakness.
The decision to run all three tracks simultaneously was deliberate. Administrative proceedings at INPI, while the most direct route to cancellation, carry no automatic suspension of the disputed registration during the process. An injunction from the Tribunal da Relação (Court of Appeal) would prevent the distributor from enforcing the marks commercially while the nullity action progressed. Together, the two formal tracks neutralised the distributor's leverage.
Assembling the evidence file required care. Under Portuguese intellectual property legislation, bad faith must be established at the date of the application – not at a later point. The team documented the contractual history, the precise expiry date of the distribution agreement, the dates of the trademark filings. Additionally. Internal correspondence from the distributor that acknowledged the client's ownership of the brand before the relationship ended. Witness statements were prepared in accordance with civil procedure rules applicable before Portuguese courts.
For matters where digital assets and AI-based tools form part of the disputed portfolio, firms may also face intersecting questions addressed under AI and technology law in Portugal. Particularly where software identifiers or algorithm-linked brand elements are involved.
To receive a tailored assessment of your IP recovery options in Portugal, contact us at info@ferrazwhitmore.com.
Key milestones and complications
The precautionary injunction was filed within seventy-two hours of the client's engagement. The court granted provisional measures within three weeks, restricting the distributor from licensing, assigning, or commercially exploiting the disputed marks. This broke the distributor's primary source of leverage.
The nullity action at INPI entered the opposition proceedings phase four months later. The distributor filed a substantive defence, arguing that the client's EU trademark registrations did not constitute use in Portugal and therefore did not generate prior rights enforceable domestically. This was the most legally substantive complication of the case. Portugal's intellectual property legislation does not automatically treat EU trademark use as constituting use within Portugal for all purposes. The team countered with evidence of targeted Portuguese-language marketing materials, Portuguese invoices, and documented sales to Portuguese end-users during the period before the dispute arose.
A second complication was procedural. The distributor sought to delay the INPI proceedings by challenging the admissibility of certain exhibits on the basis of an escritura pública (notarised public deed in Portuguese law) requirement for legalised foreign documents. Several items in the evidence file were corporate records from the client's home jurisdiction. The team resolved this by obtaining apostille certification and supplementary notarisation within the applicable deadlines, preventing any evidence from being excluded.
The Supremo Tribunal de Justiça (Supreme Court of Portugal) has clarified in its case law that bad faith in trademark registration requires the applicant to have had actual knowledge of the prior right at the time of filing. The documentary record established this conclusively. The distributor's own communications – including emails referencing the client's brand guidelines – placed their knowledge beyond reasonable dispute.
A comparable approach applied in the Spanish market is described in our IP recovery case study for Spain, where a similar bad-faith filing pattern arose in a different civil law context.
Transferable lessons for cross-border IP matters
First: EU trademark rights do not replace national registration in Portugal. An EU trademark registration provides broad protection, but domestic enforcement – particularly in bad-faith scenarios – requires documented evidence of actual use within Portugal. Businesses relying solely on EU-wide marks should audit their Portuguese-market activity and maintain organised records of local sales, marketing spend, and end-user contacts. A lawyer in Portugal with IP experience can identify gaps in a portfolio before a dispute makes them costly.
Second: speed is decisive in bad-faith cases. Once a bad-faith registration passes the initial examination stage at INPI, the administrative path narrows. Early intervention – ideally during the opposition period that follows publication – is the most cost-effective route. In this matter, the post-examination posture required a more resource-intensive dual-track approach. A law firm in Portugal with active monitoring capacity can flag suspicious filings during the opposition window, before the position hardens.
Third: precautionary measures are a strategic tool, not a last resort. The injunction application filed at the outset changed the negotiating dynamic fundamentally. The distributor could no longer credibly threaten commercial consequences while the nullity action proceeded. Practitioners note that Portuguese civil procedure rules permit precautionary relief in IP matters where urgency and a credible prima facie case are demonstrated. Businesses should not wait for a final administrative decision before seeking provisional court protection.
For a preliminary review of your IP portfolio situation in Portugal, email info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice supports technology companies, brand owners, and institutional investors in trademark registration, opposition proceedings, nullity actions, and infringement claim management across EU and international markets. As an international law firm in Portugal, we combine Portuguese civil law expertise with English common law tradition to deliver coherent IP strategies for clients operating across multiple legal systems. Our attorneys have advised on IP portfolio recovery matters before INPI and Portuguese courts, including in cases involving cross-border bad-faith registrations and emergency precautionary relief. To discuss your IP situation in Portugal, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.