Trademarks in Macau 2024

Trademarks in Macau 2024

Trademarks in Macau 2024

TRADEMARKS 2024

MACAU

Patricia Rodrigues

(RCF – Protecting Innovation)

LEGAL FRAMEWORK

Domestic law

  1. What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Macao is the Industrial Property Code (Legal Regime of Industrial Property approved by Decree-Law No. 97/99/M of 13 December 1999, as amended by Law No. 11/2001 of 6 August 2001, on the Establishment of the Customs Services of the Macao Special Administrative Region of the Peoples Republic of China) (2001).

International law

  1. Which international trademark agreements has your jurisdiction signed?

Macao is a party to the following:

  • the Agreement Establishing the World Trade Organization (1 January 1995); and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (1 January 1995).

Regulators

  1. Which government bodies regulate trademark law?

The government of Macao regulates trademark law.

REGISTRATION AND USE

Ownership of marks

  1. Who may apply for registration?

Any person or legal entity with a legitimate interest – in particular, a manufacturer or trader – may apply for trademark registration.

Scope of trademark

  1. What may and may not be protected and registered as a trademark?

Words and devices or a combination thereof may be registered. The following marks may not be registered:

  • marks consisting exclusively of signs or indications that may be used in commerce to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods, or the rendering of the services or other characteristics of the goods or services;
  • marks consisting exclusively of signs or indications that have become customary in the current language or in bona fide and established commercial practices for the designation of the goods or services;
  • marks consisting exclusively of colors, except when these are arranged in an original and distinctive manner;
  • marks containing flags, coats of arms or other emblems of Macao, of local councils, or other national or foreign public or private bodies without the consent of the competent authority;
  • marks containing official signs, seals, and stamps of control or guarantee, if intended for products that are the same or similar to the products to which these are to be applied, except with the consent of the competent authority;
  • marks containing heraldic insignia or escutcheons, medals, decorations, or distinctions of honor that the applicant is not entitled to or, if he or she is entitled thereto, if disrespect or disrepute would result from the use thereof;
  • marks containing the emblem or name of the International Red Cross or of any other body to which the chief executive of Macao has granted the exclusive right to their use, except where special authorization has been obtained;
  • marks containing a trade name, company name, business name or shop sign not belonging to the applicant, or that the applicant is not authorized to use;
  • marks containing the name or portrait of an individual without his or her consent or, in the case of a deceased person, without the consent of his or her heirs up to the fourth degree, or even if such consent has been obtained, if the use of the mark containing such name or portrait may cause disrespect or disrepute to the person concerned;
  • marks containing a sign or signs that are an unlawful reproductions without authorization of a work that is the literary or artistic property of another party;
  • marks containing false indications of the nature, quality, or utility of goods or services for which the mark is intended;
  • marks containing any false indication of origin, with regard to the country, region or locality, factory, property or place of business;
  • marks likely to cause confusion with one or more other marks already registered with respect to identical or similar goods or services in the name of another party; and
  • marks being entirely, or in a substantial part, a reproduction, an imitation or a translation of another unregistered mark that is known to belong to another party being a national of or having his or her principal place of business in a Paris Convention member state, where confusion may be caused because the mark applied for is to be used for goods or services identical or similar to those for which the well-known mark is used, provided, however, that opposition on this basis can be successful only if the owner of the well-known mark files proof that he or she has applied to register their mark in Macao.

Colors may be registrable as a mark only if arranged in an original and distinctive manner.

The shape of a product, or of the package or cover of a product, may be registered as a mark, provided that it is capable of distinguishing the goods concerned from identical or similar goods.

Collective marks may be registered. Certification marks may also be registered.

Unregistered trademarks

  1. Can trademark rights be established without registration?

Provisional protection is given to a trademark application. Total protection is given as of the grant of the trademark registration. Thus, trademark rights are not established without registration.

Only registration confers proprietary rights. The effect of registration, therefore, is the attribution of ownership.

Famous foreign trademarks

  1. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The existence of a well-known mark may be grounds for the opposition of a trademark application in Macao, provided that the owner applies for registration of the well-known mark at the same time.

The evidence that is required includes market studies that reveal the reputation of the mark to the relevant public, costs with marketing companies, sales volume and other factors relevant to the reputation of the mark.

The benefits of registration

  1. What are the benefits of registration?

Only registration confers exclusive rights to a mark. Only registration confers proprietary rights. The effect of registration, therefore, is the attribution of ownership.

The following acts performed without the consent of the owner of a registered mark are deemed infringement:

  • use in the course of trade in Macao of any sign that is identical or confusingly similar to the registered mark for goods or services that are identical or similar to those for which the mark is registered; and
  • use in the course of trade in Macao of any sign that, due to the identity or similarity of that sign and the mark or the affinity between the goods or services, creates in the consumer’s mind a risk of confusion, including the risk of association of the sign with the mark.

The exclusive right to a mark does not include the right for the owner to prevent a third party from using in the course of trade his or her own name or address, or any indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of the rendering of the services, or any other characteristics of goods or services, or even the mark itself if this is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, provided that in any such case such use is in accordance with honest practices and good customs in industrial and commercial matters.

Filing procedure and documentation

  1. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The requirements and related documents for the filing of a trademark application in Macao are as follows:

  • the applicant’s full name, nationality, occupation, address or place of business;
  • a copy of the mark (in the case of a device mark);
  • a certified copy of the home application, if a priority is claimed;
  • the list of goods and services; and
  • a power of attorney duly dated, signed by the legal representative, notarized and legalized by a notary public and a Hague Convention apostille.

Electronic filing is available. Trademark searches are available but not required before filing.

Registration time frame and cost

  1. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If no opposition is filed against the trademark application and if the application is filed with all the required documents, it usually takes five months to obtain a trademark registration and another five months to obtain the registration certificate.

The registration formally comes into effect with the granting decision of the applied trademark.

The costs to obtain a trademark registration are given upon request.

Classification system

  1. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The applicable classification is the 9th edition of the International Classification of Goods and Services under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Multi-class applications are not available.

Examination procedure

  1. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

If the opposition period lapses without any opposition having been filed or the opposition proceedings have been terminated, the application will be examined as to form, registrability per se and prior conflicting registrations.

Use of a trademark and registration

  1. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

A registered mark should be used. If a registered mark has not been used without a legitimate reason for three consecutive years, the registration of the mark may be declared forfeited.

Only registered trademarks are obliged to be used. Before registration, there is no obligation to use the trademarks.

Markings

  1. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is optional. Possible markings include ‘‘ T.M.’.

Appealing a denied application

  1. Is there an appeal process if the application is denied?

An appeal against a decision of the Economic and Technological Development Bureau may be lodged with the first-instance court within one month of notification. Both the applicant and the opposing party may lodge an appeal. Further appeals lie with the court of second instance.

Third-party opposition

  1. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Within two months of publication (the term is not extendable), any third party considering itself prejudiced by the possible grant of the registration may file an opposition. The applicant may file a counter-statement within one month (the term is not extendable).

The opposition or the cancellation of a trademark can be requested in the following circumstances:

  • that the person in whose name the registration of a mark was made was not entitled to acquire it;
  • that the registration concerns a mark that was not registrable;
  • that the grant of the registration infringes third-party rights based on priority or other legal title and, in particular, that the grant infringes upon rights to an earlier mark, provided that the use requirement in respect of that mark is complied with – it should be noted, however, that no cancellation on this ground may be requested in the case of acquiescence in the use of the later mark during five years;
  • that the mark being the subject of the registration is wholly or partly an imitation, translation or reproduction of a mark that is well known in Macao, and is used for the same or similar articles and there is danger of confusion;
  • that the mark being the subject of the registration is graphically or phonetically identical or similar to an earlier mark being highly renowned in Macao, irrespective of the goods or services for which it is applied, if use of the later mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark; or
  • that the grant of the registration infringed provisions requiring authorization or consent and this has not been given.

The cancellation procedure may be started before the competent court within one year of the date of grant of the registration of the mark.

A brand owner that does not yet have its trademark protected in Macao cannot oppose a bad-faith application.

The costs associated with a third-party opposition or cancellation proceeding are given upon request.

Duration and maintenance of registration

  1. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The duration of registration of a trademark is seven years from the application date and is indefinitely renewable for further seven-year periods.

Surrender

  1. What is the procedure for surrendering a trademark registration?

The procedure for surrendering a trademark registration involves filing a formal request at the Economic and Technological Development Bureau with the corresponding power of attorney, duly notarized and legalized with a Hague Convention apostille.

Related IP rights

  1. Can trademarks be protected under other IP rights?

Trademarks can also be protected as copyrights or designs if the corresponding requirements are fulfilled.

Trademarks online and domain names

  1. What regime governs the protection of trademarks online and domain names?

Protection can be given to trademarks online or to domain names by the unfair competition rules.

Regarding domain names, the management and registration of the same are provided by Macao Network Information Centre (MONIC).

LICENSING AND ASSIGNMENT

Licenses

  1. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

With the exception of a legal limitation, industrial property rights may, with or without consideration, be licensed for exploitation in whole or in part and when, for a limited duration, for all or part of that duration. This provision shall apply to rights deriving from industrial property right applications, but a refusal to grant such rights shall imply the forfeiture of the license.

The exploitation contract license shall be in writing.

Unless otherwise stipulated, the licensee shall, for all legal purposes, enjoy the privileges conferred on the title holder to which the exploitation license was issued, with exceptions set forth below.

The exploitation license shall be deemed non-exclusive.

An exclusive exploitation license shall be understood to be that in which the owner of the industrial property right forswears the right, for the full duration of the license, to grant any other exploitation licenses for the rights to which the license refers.

Unless otherwise stipulated in the respective contract:

  • the granting of an exclusive exploitation license shall not preclude the owner from also directly exploiting the industrial property right covered by the license;
  • the right obtained through the exploitation license may not be waived without the written consent of the industrial property right owner; and
  • no exploitation sublicenses may be granted without the written authorization of the industrial property right owner.

The granting of a license agreement is subject to registration by being written on the title and mentioned in the respective granting register.

The above-mentioned fact may be raised by the parties or their successors at any time but shall produce effects in relation to third parties only after being registered.

Assignment

  1. What can be assigned?

The rights to an applied-for or to a registered mark may be assigned independently of the goodwill of the business. Although not compulsory, it is advisable to record the assignment with the Economic and Technological Development Bureau.

Assignment documentation

  1. What documents are required for assignment and what form must they take? What procedures apply?

The requirements for registration of an assignment are as follows:

  • the deed of assignment in Portuguese, signed by the assignor and the assignee, and certified by a notary public; and
  • a power of attorney in Portuguese, signed by the assignee, certified by a notary public.

The mentioned documents must be legalized with a Hague Convention apostille.

Validity of assignment

  1. Must the assignment be recorded for purposes of its validity?

The recordal of the assignment is required to be valid against third parties.

Security interests

  1. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are recognized.

For the purposes of validity or enforceability, the security interest must be the object of appropriate protection measures, such as the celebration of confidentiality agreements with employees and partners, containing clauses in the event of non-compliance.

ENFORCEMENT

Trademark enforcement proceedings

  1. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The owner of a trademark can ask for enforcement of the rights of its trademark against an alleged infringer. There are no specialized courts for this matter and the criminal law of Macao does not establish the trademark enforcement proceedings. However, the Civil Procedure Code applies.

Procedural format and timing

  1. What is the format of the infringement proceeding?

Only registration confers exclusive rights to a mark. The following acts done without the consent of the owner of a registered mark are deemed infringements:

  • use in the course of trade in Macao of any sign that is identical or confusingly similar to the registered mark for goods or services that are identical or similar to those for which the mark is registered; and
  • use in the course of trade in Macao of any sign that, due to the identity or similarity of that sign and the mark or the affinity between the goods or services, creates in the consumer’s mind a risk of confusion, including the risk of association of the sign with the mark.

The exclusive right to a mark does not include the right for the owner to prevent a third party from using in the course of trade his or her own name or address, or any indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the services, or any other characteristics of goods or services, or even the mark itself if this is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, provided that in any such case the use is in accordance with honest practices and good customs in industrial and commercial matters.

There are severe criminal sanctions provided for in law; namely, heavy fines and imprisonment for up to three years. Sanctions also apply to those who deliberately try to have a mark registered that infringes upon the rights of another party.

Burden of proof

  1. What is the burden of proof to establish infringement or dilution?

The burden of proof lies with the plaintiff, who has the burden of proving that its mark has been infringed.

Standing

  1. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Both the trademark owner and the licensee may seek remedies. The trademark owner must have the mark registered before the Trademarks Office and the licensee can only intervene if the registered user agreement (license to use) is recorded before said office.

Border enforcement and foreign activities

  1. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Border enforcement measures can be conducted by the Macanese Customs Authorities to halt the import and export of infringing goods.

Only activities that take place in Macanese territory may be taken into account. However, this is not applicable to goods made outside the country from the moment that they are imported into Macao.

Discovery

  1. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Adverse or third parties (including state entities) may be required to submit documents or exhibit goods. If they resist, a court order may be sought.

Timing

  1. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

There is no typical time frame for infringement or dilution actions. They are lengthy and can last for years.

Limitation period

  1. What is the limitation period for filing an infringement action?

There is no time limit for filing an infringement action; that is, the infringement action can be filed until the infringement is occurring.

Litigation costs

  1. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

There is no typical range of costs. These depend mainly on the professional fees that are charged.

Appeals

  1. What avenues of appeal are available?

An appeal against the decision of the Economic and Technological Development Bureau may be lodged with the first instance court within one month of notification. Both the applicant and the opposing party may lodge an appeal. Further appeals lie with the court of second instance.

Defenses

  1. What defenses are available to a charge of infringement or dilution, or any related action?

The defendant or alleged infringer has the legal right to participate in the proceeding by responding to the complaint and submitting evidence.

Remedies

  1. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The IP Code contains provisions regarding the penalties imposed on an infringer, but is silent regarding the apportionment of monetary relief. Injunctive relief is available permanently if there is an immediate danger to the complainant.

ADR

  1. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are available in Macao.

UPDATE AND TRENDS IN TRADEMARKS IN MACAU

Key developments of the past year

  1. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

No updates at this time.

* The information in this chapter was accurate as at August 2022.

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