A European technology company had spent several years building a recognisable brand across three EU member states. When a Portuguese competitor began trading under a near-identical name in the same Nice classification categories. The client faced a stark choice: act decisively within a narrow procedural window. Alternatively, risk watching a carefully constructed brand position erode in a key Iberian market. The cost of delay, in lost licensing revenue, damaged distributor relationships, and weakened EU-wide brand coherence, quickly exceeded the cost of enforcement proceedings.
Cross-border trademark enforcement in Portugal proceeds through a defined sequence of administrative and judicial steps. The injured party must establish priority of use or registration, identify the applicable Nice classification overlap, and file before the competent authority or court within mandatory time limits. Portugal's intellectual property legislation and the EU trademark regulation together govern how foreign rights holders may enforce their marks against local infringers.
This case study outlines the strategy Ferraz & Whitmore deployed on behalf of that client, the milestones and complications encountered, and three transferable lessons for businesses facing analogous cross-border disputes.
Client profile and the challenge at hand
The client was a mid-sized technology business incorporated in Northern Europe. It held a registered EU trademark in several Nice classification categories covering software services and digital platforms. Its Portuguese market entry had been gradual – initially through a distribution agreement, then through a direct commercial presence in Lisbon.
The infringing party was a Portuguese company that had filed a domestic trademark application with the Instituto Nacional da Propriedade Industrial (INPI. the Portuguese Industrial Property Office) for a mark that was visually and phonetically similar to the client's EU trademark. The application covered overlapping Nice classification classes. The INPI had published the application for opposition, triggering a strict opposition window. Crucially, the client was not monitoring INPI publications and only became aware of the filing through a distributor alert – several days into the opposition period.
The strategic challenge was threefold. First, the client needed to file a timely opposition before INPI. Second, it needed to assess whether parallel proceedings before the Tribunal da Relação (Court of Appeal level, which has jurisdiction over IP matters in Portugal) were warranted to obtain interim relief. Third, it needed to preserve its position at EU level to prevent the Portuguese registration from being used to challenge the EU mark's scope through a coexistence argument.
For businesses with active EU trademark portfolios, our intellectual property services in Portugal cover the full enforcement lifecycle, from INPI monitoring to court proceedings and cross-border coordination.
Legal strategy: opposition, interim relief, and coordination
The team adopted a two-track strategy. Track one was the INPI opposition proceeding. Track two was a precautionary application to the competent civil court for interim injunctive relief to prevent the Portuguese party from using the contested mark commercially while the opposition was pending.
On track one, the opposition filing documented the client's EU trademark registration date, the scope of Nice classification coverage, and evidence of prior use in Portugal through the distribution agreement. Portuguese intellectual property legislation provides that a senior EU trademark right constitutes a valid ground for opposing a later domestic application. The INPI examiner was presented with a comparative analysis of both marks – visual, phonetic, and conceptual similarity – alongside evidence that the relevant consumer sector would experience a likelihood of confusion.
On track two, the team assessed the conditions for interim relief under Portuguese civil procedure rules. The court required a demonstration of two elements: fumus boni iuris (plausibility of the underlying right) and periculum in mora (risk of irreparable harm from delay). The client's registered EU trademark provided a strong foundation for the first element. For the second, the team assembled commercial evidence – distributor communications, market analysis, and a prospective licensing opportunity that the infringing activity was directly jeopardising.
A complication arose at this stage. The Portuguese defendant had registered a domain name predating the EU trademark's extension into Portugal, which it presented as evidence of prior local use. Countering this required a granular review of the defendant's actual commercial activity under the contested mark. The domain registration alone, the team argued – correctly, as the proceeding later confirmed – did not constitute genuine trademark use under Portugal's intellectual property legislation.
Where the matter intersected with digital platform activity, questions of technology regulation also arose. Our analysis of AI and technology law in Portugal informed how the team characterised the client's software service categories for classification purposes.
Key milestones and complications
The opposition was filed within the available window. The INPI process moved through several defined stages: notification to the applicant, a response period, a reasoned examination phase, and a written decision. The proceeding took approximately eight months from filing to a decision upholding the opposition and refusing the Portuguese application.
The interim relief application was heard within six weeks of filing. The court granted a provisional order preventing the defendant from using the contested mark in commercial communications, online platforms, and any contractual documents pending the outcome of the main INPI proceeding and any subsequent appeal.
The defendant filed an appeal of the INPI decision with the Tribunal da Relação (Court of Appeal). This introduced a further phase of approximately twelve months. The appellate court upheld the INPI's decision, confirming the priority of the EU trademark and the likelihood of confusion across the relevant Nice classification categories.
A secondary complication involved a Portuguese company law dimension. The defendant had structured its corporate identity – including its registered business name – around the contested mark. Under Portuguese corporate legislation, a company's registered name is distinct from its trademark. However. The courts took a coherent view: the business name use was inseparable from the trademark infringement and fell within the scope of the injunctive order.
For comparable disputes in neighbouring markets, our case study on cross-border trademark enforcement in Spain illustrates how similar strategies are adapted within the Iberian legal context.
To explore how this enforcement model applies to your specific brand position in Portugal, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border trademark matters
Three principles from this matter apply broadly to any cross-border trademark dispute involving Portugal.
First: monitoring is enforcement infrastructure. The client's delayed awareness of the INPI application compressed the available response time to a fraction of the opposition window. A structured monitoring arrangement – covering INPI publications and EUIPO watch services across relevant Nice classification categories – is not an optional cost. It is the precondition for any meaningful enforcement right. Rights not monitored are rights progressively lost.
Second: domain registration does not equal trademark use. A common argument by infringing parties in Portuguese proceedings is that a domain name predating the senior mark constitutes prior use. Portuguese intellectual property legislation and the courts that have addressed this question draw a clear distinction: genuine trademark use requires commercial activity under the mark directed at the relevant public. A dormant or ancillary domain does not satisfy that threshold. Practitioners note that assembling the counter-evidence – including server logs, actual transaction records, and market presence data – at an early stage is critical to neutralising this argument before it gains traction.
Third: business name and trademark are legally distinct but practically linked. When a defendant has built its corporate identity around the contested mark. Portuguese corporate legislation creates a separate procedural pathway. company name challenge. that can run parallel to the trademark proceeding. Coordinating both channels, rather than treating them separately, avoids a scenario where a trademark victory is undermined by the defendant continuing to trade under an identical or deceptively similar business name.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice supports international companies through the full spectrum of trademark registration, opposition, and enforcement proceedings in Portugal and across the EU. We combine Portuguese civil law expertise with English common law tradition to deliver cross-border IP strategies that are coherent across multiple legal systems. The firm's IP and technology team has represented clients in proceedings before INPI, the Tribunal da Relação. Additionally. The Supremo Tribunal de Justiça (Supreme Court of Portugal). Additionally, works alongside EUIPO procedures where EU trademark rights are engaged. As an international law firm in Portugal, Ferraz & Whitmore advises technology companies, brand owners, and institutional investors who require a lawyer in Portugal with cross-border enforcement experience. To discuss a trademark dispute or IP registration matter 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.