“Third-party rights” for trademark revalidation

By Judgment of July 2022, the Court of Appeal of Lisbon dealt with the best interpretation to give to the expression “without prejudice to the rights of third parties” regarding the revalidation of an expired trademark, adopting a restrictive interpretation.

When the trademark owner does not pay the due administrative fees on time, the registration of the trademark lapses. However, it is possible to revalidate such registration if three legal requirements are met:

1. The application for revalidation is made within 1 year from the publication of the notice of expiry in the Industrial Property Bulletin.
2. Payment of three times the fees due is made;
3. Without prejudice to the rights of third parties.

The courts discussed the best interpretation to be given to the third assumption: whether it covers owners of allegedly obstructive trademarks that were already registered at the time of the application for the trademark to be revalidated or whether it only refers to bona fide third parties who have made effective and serious preparations or started exploiting or marketing the subject matter between the original date of application and the date of the requested revalidation.

The Court of Appeal of Lisbon concluded that what is relevant to the decision to be given on the application for revalidation of the expired registration is the link between “prejudice to third parties” and what is meant by interference with the economic activity of a bona fide third party as an impediment to revalidation of the registration

Thus, for this Court, the prerequisite “without prejudice to the rights of third parties” must be interpreted in a strict sense, referring to rights acquired in the meantime and not to third parties who already held rights before the grant of the registration of the trademark, who could have opposed the decision granting registration of the trademark and did not do so within the prescribed period.