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Feature By Manuel Lopes Rocha, Carolina Leão d’Oliveira and Carlos D Simões

to intellectual within the are handled and coordinated by the IP Department of the Economic Services Bureau Trademark of the Special Administrative Region Government. Intellectual property in Macau is governed by the Legal Regime of Industrial Property, approved by Decree 97/99/M of 13 1999. Chapter IV (Articles 197 to 232) of the law – which law in Macau regulates trademarks – is similar to Chapter IV of the Portuguese Industrial Property Code. Section 1 of the law (roughly equivalent to Section I of the Portuguese code) refers to the “subject matter of protection” and establishes provisions with regard to: – a Portuguese • the subject matter of trademarks (Article 222 of the Portuguese code, “ of the trademark”), as well as exceptions and limitations to protection; and • collective trademarks regulated by a sole provision (Article 200 legal regime of the law, roughly equivalent to Articles 228 to 232 of Section I(II) of the Portuguese code).

The remaining provisions in the law are organised in a inside substantially similar to those found in the Portuguese code: • registration matters, which are divided into applicable law, procedures and extinction; • assignment of trademarks and limitations on this (Section V, “Use of the trademark”, which gathers provisions that are part of Section IV of the Portuguese code); and • rules concerning uses of trademarks, the unalterability of trademarks and indications of registration (Section III of the Portuguese code). Although Macau is one of two special administrative regions in China, its IP have more in common Another feature that highlights the importance of the Portuguese legal system with regard to the regulation of trademarks with the Portuguese regime. In particular, there are in Macau is the relevance of the throughout some striking divergences between the two traditions the process of acquiring and using a trademark. Pursuant to Article of which practitioners should be aware 206 of the law, “trademark registration applications shall be filed in writing in the official language of the Territory” – that is, in Portuguese or (). Moreover, Article 198 of the law states that any wording Intellectual property in is becoming an increasingly important contained in trademarks must be in one of three languages​​: topic in international legal debate. China is attracting particular Portuguese, Chinese or English. In addition, the indication of the interest, not only because of the global impact of its phenomenal registration must also be in one of these three languages: according , but also – and perhaps especially – in view of to Article 225, the holder of the trademark registration shall be fears about IP rights enforcement. entitled to add the acronym MR, R or simply (r), to designate Foreign thinking about the Chinese IP regime has traditionally marca registada (‘registered mark’ in Portuguese), the equivalent focused on ​​infringement and a lack of effective regulation. expression in Chinese or else the English expressions ‘registered Counterfeiting continues to increase: the production, distribution trademark’ or TM. and sale of counterfeit goods is now a major industry that is becoming increasingly sophisticated. In addition, a large The subject matter of a trademark registration of government measures designed to protect and enforce IP rights With regard to the subject matter of a trademark registration, have produced disappointing results. Chinese and Macanese laws do not diverge significantly. The However, since the , and especially since becoming a criterion for classifying a trademark as such is, in both cases (and member of the Organisation in 2001, China has been also in ), the distinctive capability of the mark – that intensively developing its regulation of intellectual property, at is, a trademark must be able to distinguish the goods (Chinese both legislative and institutional levels. This remarkable push Trademark Law) or the goods and services (Macanese law and reflects the desires of the Chinese authorities to participate in the Portuguese code) of an enterprise (Macanese law and Portuguese global capitalist economy. code) or of a natural or legal person or any organisation (), of any other goods or services of others (see also Article 8 of Macau – a special case the Chinese law, Article 197 of the Macanese law and Article 222(1) Macau is one of two special administrative regions in China (the of the Portuguese code). With regard to signs that are eligible for other being ). Since 1999, Macau’s IP regime has had protection, the catalogues contained in the three legislative texts much in common with that of Western European , referred to appear to be non-exhaustive, provided that the sign at particularly Portugal, from which it draws heavily. issue is “capable of being represented graphically” (in the language The protection of IP rights in Macau is autonomous from the of both the Macanese law and the Portuguese code), or is “visible” of the People’s of China. All matters relating (according to the English version of the Chinese law). www.WorldTrademarkReview.com February/March 2013 World Trademark Review 61 Feature: Trademark law in Macau

In spite of the demographic and cultural proximity of China and Macau, the special administrative region has an intrinsically Portuguese IP regime. Naturally, Macau’s IP regime is in many ways similar to the Chinese system, but that is largely due to the fact that both China and Macau are members of WIPO and party to international agreements designed to protect IP rights

Exceptions to protection publication of the application (which takes place after verification With regard to this feature, it is possible to observe some differences that all legal requirements have been met), complaints can be between the Chinese and Macanese regimes. The Chinese law presented within two months. The essential difference from what imposes limitations on the use of a trademark based on matters happens in Macau relates to the total time until the registration related to state sovereignty. Besides limitations associated with state is complete, since in Portugal the decision is published in the symbols, emblems of public or foreign entities and medals (which in Industrial Property Journal within 12 months of it being published the Portuguese and Macanese laws are grouped together under the (provided that no opposition has been filed or the applicant has designation “limitations imposed by public order and morality”), overcome any opposition and the trademark has been found by the Article 10 of the Chinese law further prohibits trademarks that, examiner to be distinctive). in any way, “have the nature of discrimination against any ”, constitute “exaggerated and deceitful advertising”, or Duration of the registration may be “detrimental to socialist ethics or customs” or have “other This is the only subject on which the Chinese and the Portuguese unwholesome influences”. In addition, Article 11 of the Chinese law regimes converge, while both diverging from the Macanese regime. imposes the same limitations on the registration of a trademark According to Article 37 of the Chinese Trademark Law and Article as are set out in Article 199 of the Macanese law and Article 223 of 255 of the Portuguese code, a trademark is valid for 10 years from the Portuguese code: a trademark shall not be registered when it the day the registration is approved. In contrasting, pursuant to directly indicates the quality, principal raw materials, function, Article 218(1) of the Macanese law, the duration of registration shall use, weight, quantity or other features of the goods, and when be seven years. These validity periods may, in accordance with the it bears only the generic name, design, or model number of the respective laws, be renewed indefinitely for equal periods. goods concerned. The Macanese law and the Portuguese code (in the provisions referred to above) further add an express limitation Conclusion that is only implicitly contained in the Chinese law (Article 8): a In spite of the demographic and cultural proximity of China and trademark shall not be registered if it consists of a colour, unless Macau, the special administrative region has an intrinsically there is a combination of colours or of colours with graphics, text or Portuguese IP regime. Naturally, Macau’s IP regime is in many ways other elements arranged in a particular and distinctive manner. similar to the Chinese system, but that is largely due to the fact that both China and Macau – and for that matter Portugal – are members of Total time to register a mark the World Intellectual Property Organisation and party to international In China, it can take up to two years to complete the registration agreements designed to protect IP rights, such as the Agreement on of a trademark. This is usually divided into: Trade-Related Aspects of Intellectual Property Rights and the Berne • over one year of analysis, performed by the Chinese Trademark Convention for the Protection of Literary and Artistic Works. WTR Bureau (which depends on the State Administration of Industry and Commerce of China); • a three-month period of opposition; and • a period of two months until final approval and publication.

In Macau, the applicant must start by submitting the trademark application before the IP Department; this application – upon a formal examination – will subsequently be published in the Official Gazette of the Special Administrative Region of Macau. There is a two-month time limit for oppositions. If no oppositions are received Manuel Lopes Rocha is a partner and Carolina Leão d’Oliveira and the registry requirements are fulfilled, the IP department shall a trainee at PLMJ. Carlos D Simões is partner at DSL decide on the registration of the trademark (material examination) [email protected] within six months (counted from the application’s publication [email protected] in the Official Gazette). The procedure is similar in Portugal: after [email protected]

62 World Trademark Review February/ 2013 www.WorldTrademarkReview.com