Overview: Trademark application in Macau
Trademark enforcement procedure
What types of legal or administrative proceedings are available to assert the rights of a trademark owner against an alleged infringer or dilutive use of a trademark, apart from the opposition and cancellation actions mentioned above? Are there specialized courts or other tribunals? Is there a provision in criminal law regarding trademark infringement or an equivalent offense?
The owner of a trademark can request the enforcement of his trademark rights against a suspected infringer. There are no specialized courts in this matter and Macao’s criminal law does not establish a procedure for the application of trademarks. However, the Code of Civil Procedure applies.
Format and timetable of the proceedings
What is the format of the infringement procedure?
Only registration confers exclusive rights over a trademark. The following acts performed without the consent of the owner of a registered trademark are considered infringements:
- the use in the course of business in Macao of any sign which is identical or similar to the point of confusing the registered mark for goods or services identical or similar to those for which the mark is registered; and
- the use in the life of business in Macau of any sign which, by reason of the identity or similarity of that sign and of the mark or affinity between the goods or services, creates in the mind of the consumer a risk of confusion, including the risk of association of the sign with the mark.
The exclusive right of a trademark does not include the right for the owner to prevent a third party from using in the course of trade his own name or address, or any indication concerning the nature, quality, quantity, destination, value, geographical origin, time of production of the product or provision of services, or any other characteristic of the product or service, or even the mark itself if this is necessary to indicate the destination of a product or service, in particular as an accessory or spare part, provided that, in such a case, the use complies with honest practices and good morals in industrial and commercial matters.
Severe criminal penalties are provided for by law; namely, heavy fines and imprisonment for up to three years. Sanctions also apply to those who deliberately attempt to register a trademark infringing the rights of another party.
Burden of proof
What is the burden of proof to establish infringement or dilution?
The burden of proof lies with the applicant, who has the burden of proving that his mark has been infringed.
Who can seek redress in the event of alleged trademark infringement and under what conditions? Who has standing to lodge a criminal complaint?
Both the trademark owner and the licensee can seek redress. The trademark owner must register the trademark with the Trademark Office and the licensee can only intervene if the registered user contract (user license) is registered with this office.
Border control and foreign activities
What border enforcement measures are available to stop the import and export of counterfeit goods? Can activities that take place outside the country of registration justify a charge of infringement or dilution?
Border enforcement measures can be taken by Macanese customs authorities to stop the import and export of counterfeit goods.
Only activities that take place on Macanese territory can be taken into account. However, this does not apply to goods produced outside the country from the time they are imported into Macau.
What discovery or disclosure devices are allowed to obtain evidence from an opposing party, third parties or parties outside the country?
Opposing or third parties (including state entities) may be required to submit documents or exhibit goods. If they resist, a court order can be requested.
What is the typical timeframe for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
There is no standard time limit for infringement or dilution actions. They are long and can last for years.
What is the limitation period for bringing an infringement action?
There is no time limit for filing an infringement action; that is, the infringement action can be filed until the infringement occurs.
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
There is no standard cost range. These mainly depend on the professional fees that are charged.
What remedies are available?
An appeal against the decision of the Economic and Technological Development Office can be lodged with the court of first instance within one month of the notification. Both the applicant and the opposing party can appeal. The other remedies are the responsibility of the court of second instance.
What defenses are available for a charge of infringement or dilution, or any related action?
The defendant or the alleged infringer has the legal right to participate in the proceedings by responding to the complaint and submitting evidence.
What are the remedies available to a winning party in an infringement or dilution action, etc. ? What criminal remedies exist?
The intellectual property code contains provisions concerning the penalties imposed on an offender, but is silent on the distribution of pecuniary reparations. An injunction is permanently available if there is an immediate danger to the complainant.
Are ADR techniques available, commonly used and applicable? What are the benefits and the risks?
ADR techniques are not available in Macau.