- CHAPTER I RIGHT TO THE TRADE MARK
- CHAPTER II INFRINGEMENT OF REGISTERED TRADE MARK AND PROHIBITION OF UNFAIR COMPETITION
- CHAPTER III FINAL AND TRANSITORY PROVISIONS
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DECREE LAW NO.56/95/M OF
November 6, 1995
The approval of this decree governing the protection of trade marks achieves the objective of setting up a local system of trade mark registration and thus, while maintaining cooperation in this respect, removes the need for intervention by a Portuguese administrative body — the National Institute of Industrial Property — in relation to the Territory of Macao, and confers the necessary powers for operating the said system on the Directorate of Financial Affairs.
Moreover, it meets the wider objective of setting up a credible system for the protection of industrial property rights which it is hoped will, together with the other benefits and incentives recently set up by the Government of the Territory, serve to attract the investment needed to provide a boost to the economy and development of Macao.
Therefore,
Having heard the Consultative Council,
The Governor-decrees, pursuant to the provisions of Article 13, No. 1 of the Fundamental Law of Macao, that the following shall have legal force in the Territory of Macao:
CHAPTER I RIGHT TO THE TRADE MARK
SECTION I GENERAL PROVISIONS
Article 1 (Scope of protection)
The present decree governs the protection of trade marks.
Article 2 (Right to the trade mark) Anyone who adopts a certain trade mark to identify the goods or services produced by his economic activity and who satisfies the legal requirements, particularly those relating to registration, shall enjoy the ownership thereof and exclusive rights therein. The right to the trade mark confers the guarantees established by law relating to property in general and is protected in particular by the terms of the present law and the provisions of international law.
Article 3 (Field of application)
1. The present decree shall apply to residents of the Territory of Macao and to the citizens of those countries which belong to the International Union for the Protection of Industrial Property, the terms of the Paris Convention of 20th March 1883 and subsequent revisions thereto, regardless of their place of domicile or abode, subject to the special provisions concerning jurisdiction and lawsuits.
Legislative Texts Citizens of any other country who have a domicile or a real and effective industrial or commercial establishment in the territory of one of the member countries shall be deemed to be citizens of the countries belonging to the Paris Convention. As far as citizens of other countries are concerned, the provisions of the international agreements between Macao and the state in question, or, failing any such agreements, a reciprocal arrangement, shall apply.
Article 4 (Use of unregistered trade marks) The use of unregistered industrial or commercial trade marks or service marks shall be permitted. Anyone who uses an unregistered trade mark for a period of no more than six months shall, during this period, have the right of priority in applying for registration, and may claim against applications previously made by others.
Article 5 (Legal presumption of grant of the right to the trade mark)
Registration of the trade mark simply implies a presumption of novelty or distinction compared with those previously registered, and shall be granted at the expense and risk of the applicant.
Article 6 (Optional use of the trade mark)
Without prejudice to the provisions concerning the lapse of the right to the trade mark, the use thereof is optional, except in the case of goods or services for which the use of a registered trade mark has been declared mandatory by law.
Article 7 (Right to use the trade mark)
The right to use the trade mark shall be conferred on anyone who has a legitimate interest therein, i.e.:
a) Industrialists or manufacturers, in order to identify goods produced by their industry or factory,
b) Businessmen, in order to identify goods produced by their business
c) Craftsmen, in order to identify goods produced by their art, craft or trade
d) Service providers, in order to identify their particular field of activity.
Article 8 (Collective mark) In addition to the provisions of the previous article, the right to use a trade mark shall also be granted to organisations which supervise or regulate economic activities, in order to identify goods produced by the activities which they supervise or regulate, in accordance with their purposes and pursuant to the terms of their respective statutes or constitutional charters. The organisations referred to in the above paragraph shall, as applicable, arrange for the insertion of provisions in their respective constitutional charters or statutes specifying:
a) who shall be entitled to use the trade mark
b) the conditions under which the trade mark can be used
c) the rights and obligations of interested parties in the case of infringement
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3. The Directorate of Financial Affairs shall be notified by the management of the organisation owning the trade mark within thirty days of any changes to the statutes which alter the collective mark system.
Article 9 (“Registered Trade mark”)
Throughout the validity of the registration, the proprietor of the trade mark has the right to add to it the term “Marca Registada” or the initials “M.R.” or simply the letter “R”, as well as the Chinese expression [Chinese characters] and the corresponding romanised version in Cantonese, chu chak seong pio, or in Mandarin, zhù cè shang biao, and the English expressions “Registered Trade mark” or “T.M.”.
Article 10 (Registration for goods and services)
The registration of trade marks is carried out for goods or services, the Directorate of Financial Affairs being responsible for indicating the corresponding classes, in accordance with the prescribed system of classification, to be published by government directive.
Article 11 (Addition and substitution of goods or services)
Any goods or services added subsequently, and the substitution of one product or service by another, even if within the same class, shall be subject to a new registration procedure.
Article 12 (Inalterability of the trade mark) The trade mark may not be altered, any change to any of its component parts being subject to a new registration procedure. The provisions of the above paragraph shall not apply to simple changes which do not affect the identity of the trade mark and affect only its proportions or the material in which it has been stamped, engraved or reproduced, including the colour, if this is not expressly claimed as one of the characteristics of the trade mark.
Article 13 (Commencement and duration of the trade mark)
The right to the trade mark shall take effect from the date of grant and shall remain valid for a period of seven years from the date of filing of the respective application, and shall be renewable for the same period under the terms of Article 71.
Article 14 (Composition of the trade mark) The trade mark may consist of one or more words or figurative or emblematic designs which, when applied in some form to goods or to their packaging, distinguish those goods from other identical or similar goods. The trade mark may also comprise the shape of goods or their packaging inasmuch as these distinguish them from other identical or similar goods or packaging. Colours in themselves do not constitute a trade mark except, if the interested party has applied for their protection, where they are combined either together or with graphics, printed words or other items, in a particular and distinctive fashion. The trade mark may not consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the
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time of production of goods or which have become customary in current language or in the bona fide and established practices of the trade.
Article 15 (Languages which may be used in the trade mark) The words in the trade mark shall be in Portuguese, Chinese or English, or any combination of these languages. In the registration application, Chinese characters shall be romanised, and a translation given, unless they comprise an invented design. Trade marks for goods destined solely for export may be written in any language, but the trade mark shall lapse if they are used in Macao. The obligation to use Portuguese, Chinese or English shall not apply to applications for international trade mark applications and to those made by foreign individuals or companies not domiciled in Macao.
Article 16 (Publication)
1. All notices specified in the present decree shall be published, at the applicant’s expense, in the Official Gazette of Macao, with the official support of the Directorate of Financial Affairs.
2. The following are to be published in the form of notices: a) The application for registration of the trade mark b) The grant or refusal of right to the trade mark c) Any assignment, encumbrance or licence of exploitation of the right to the trade mark d) Changes in address, registered office or name of the proprietor of the trade mark e) The renewal, lapse or revocation of the right to the trade mark.
Article 17 (Notification) Notifications to be issued under the terms of this decree, with the exception of those arising during legal proceedings, in which case the provisions of procedural law shall apply, shall be sent by registered letter. Notifications issued under the terms of the above paragraph shall be deemed to have been served on the third day after posting, or on the first working day after this, if it is not a working day, and shall not take effect prior to this date. The assumption made in paragraph 2 above may be refuted by the recipient of the notification if the notification is received later than the presumed date, for reasons not attributable to the recipient, proof of the actual date of receipt being required from the postal service.
Article 18 (Persons entitled to take action)
1. Action and proceedings may be instigated only: a) By the interested parties or by their duly empowered representatives, if they are
domiciled or established in Macao; b) By lawyers.
Legislative Texts If the petitions are signed by representatives as specified in paragraph a) above, the relevant power of attorney must be attached thereto, and if a power of attorney has been issued in a foreign country, it must be duly authenticated and translated. Lawyers may instigate in the name and on behalf of their clients all types of proceedings and action specified in this decree, and are exempt from having to present their credentials, except in the case of proceedings involving the renunciation or surrender of the right to the trade mark.
Article 19 (Fees)
The Governor shall issue an order specifying the fees due for the proceedings specified in this decree and also the terms and conditions of payment thereof.
Article 20 (Public nature of registers)
Anyone may request a certified copy or photocopy of registration entries, filed documents and pending applications for registration which have already been published, as well as information on the date of publication of any of the documents referred to in this decree.
SECTION II REGISTRATION PROCEDURE
SUBSECTION I APPLICATION FOR REGISTRATION IN MACAO
Article 21 (Priority of registration application) Except in the cases specified in the following articles, the registration of the right to the trade mark shall be granted to whomever first submits the corresponding application, accompanied by the required documents which provide the information specified by law. If the application is not accompanied by all the required documents, the priority shall apply from the date and time at which the last document is provided.
Article 22 (Priority of registration application submitted in a Paris Convention member country) Anyone who has personally or through his legal representative submitted a regular application for registration of a trade mark in any of the Paris Convention member countries, or the applicant’s successor in title, shall have the right of priority in applying for registration in Macao. The term regular application for registration shall be deemed to mean an application which has been submitted under conditions which allow the date on which it was submitted in the country in question to be established, whatever may subsequently have affected it in any way. The duration of the right of priority shall be six months from the day immediately following the date on which the application for registration was filed.
Article 23 (Scope of priority of registration application submitted in a Paris Convention member country)
1. A registration application submitted within the priority period referred to in the above article may not be refused or invalidated on the basis of any fact verified between the initial
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registration application and that made in Macao, including in particular any other application for registration with an identical object or on the basis of use of the trade mark.
2. The facts referred to in the latter part of the above paragraph cannot in any case give rise to rights of third parties or the priority of registration based on use.
Article 24 (Priority of the Paris Convention) An applicant who wishes to avail himself of the priority for a registration application made in a Paris Convention member country shall, together with all other formalities necessary for processing his registration application in Macao, declare his intention to do so, stating the number, date and time and country of filing of the application. The applicant shall also, within a period of three months from the date of submission of the registration application in Macao, attach a copy of the registration application which gives rise to the priority, clearly indicating the date on which that application was filed. The documents referred to in the above paragraph do not have to be legalised, but they must be authenticated by the authority which received the initial application. In the case of succession to a title, the successor to the right of the original applicant must provide evidence of such succession when the registration application is submitted in Macao.
Article 25 (Failure to fulfil legal formalities)
Any failure to fulfil the formalities referred to in the above article shall result in the loss of the right of priority.
Article 26 (Priority based on use of an unregistered trade mark) Applicants who wish, under the terms of paragraph 2, Article 4, to claim priority for their registration application based on the use of an unregistered trade mark shall, together with all other items necessary for processing the application registration in Macao, submit all documents providing evidence of the said use. The documents to be used as evidence, as referred to in the above paragraph, shall be freely assessed, except in the case of authentic documents.
Article 27 (Application for registration)
1. The trade mark registration process begins with the submission to the Directorate of Financial Affairs of two copies of an application for registration, signed by the applicant or by the applicant’s representative and drawn up using the proper printed form of the type shown in the example attached to this decree.
2. The applicant must specify on the form referred to in the above paragraph:
a) His name, firm or company name;
b) His nationality;
c) His profession or main occupation;
d) His address or registered office;
e) Whether the trade mark relates to goods or services;
f) The class and the goods or services to which the trade mark relates;
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g) Whether the trade mark is industrial or commercial;
h) The items referred to in Article 24 if the applicant wishes to claim the priority of the Paris Convention;
i) The items referred to in the preceding article if the applicant wishes to claim priority on the basis of use of an unregistered trade mark;
j) The legal or statutory provisions under which the collective mark system has been established, if applicable.
Article 28 (Processing of application for registration)
The following items must be submitted with the application for registration:
a) A representation of the trade mark, attached to the appropriate section of the printed form;
b) Two photolithographs, with maximum dimensions of 7 × 8 cm and minimum of 1.5 cm × 1.5 cm, for typographic reproduction of the trade mark;
c) Authorisation from a third party if the applicant plans to include in the trade mark that party’s name, firm or company name, insignia or likeness;
d) Authorisation to include in the trade mark any flags, armorial bearings, shields, coats of arms, or other emblems of the Territory, municipal authorities or other public or private entities, whether national or foreign, official badges, stamps and seals of certification and guarantee, private emblems or names of the Red Cross or other similar organisations
e) The items referred to in Article 26in the case where the applicant wishes to claim priority on the basis of the use of an unregistered trade mark.
Article 29 (Proof of filing of application for registration)
The duplicate of the application for registration shall be returned to the applicant duly stamped and bearing a note of its number as well as the date and time, to serve as proof of filing.
Article 30 (Classification of goods and services)
1. Once the application for registration of the trade mark has been made, the Directorate of Financial Affairs will classify the goods and services in accordance with the provisions of Article 10.
2. If the application includes goods or services classified under different classes, the applicant shall be told to restrict the application to one single class and to make further applications, if required, for the different goods or services.
3. The applicant may oppose the classification within a period of thirty days from the date of publication of the application for registration of the trade mark.
4. A decision shall be taken concerning the opposition referred to in the above paragraph within a maximum of fifteen days and shall be notified to the applicant.
5. An appeal may be made against the decision on the opposition to the court having jurisdiction in the matter. The appeal shall be lodged within thirty days of publication of the notice of the grant of right to the trade mark, the provisions of Article 47 applying, as appropriate.
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