Portugal: For Safe Marketing: The Influence Of Intellectual Property Rights On Marketing Strategies

Last Updated: 2 September 2018
Article by Vitor Palmela Fidalgo
Most Popular Article in Portugal, September 2018

Intellectual property rights play a crucial role in the marketing strategy of all kinds of an increasing number of companies, and it involves a set of processes, creations and communications offerings which have value for the clients, customers or society in general. Marketing necessarily generates intangible assets that may be protected by intellectual property rights. In fact, this is the first significative aspect of the influence of intellectual property rights on marketing strategies: the protection of intangible assets in a marketing campaign.

Notwithstanding the above, enthusiastically drawing the attention of clients or customers and attempting to outdo the competition, marketing campaigns sometimes exceed legal limitations, especially concerning the respect of intellectual property rights duly protected by law. In this sense, the compliance of marketing strategies to what is allowed by law is also a crucial aspect where marketing and intellectual property must go hand in hand. An unlawful campaign can conceivably effect the communication strategy itself and has strong legal consequences.

1. Types of intellectual property rights that may be involved in marketing campaigns

New commercial names, logos, domain names, product names, slogans, flyers, white papers, brochures, newsletters, landing pages or website designs are some examples which are part of the marketing communication and strategy. Whether they are protected or not, in the particular case, by intellectual property rights will depend on whether or not they fulfill the respective requirements for protection. However, at least in theory, they all can be protected. The extension and the way of protection will differ according to the kind of asset in question.

1.1. Trademark

A trademark is a sign (word or figurative), which identifies products or services of a particular source from those of others. In the marketing advertisement it is a common occurrence to see new signs launched in the communication. These signs are usually sub-brands which, together or not with the main brand of the company, emerge as a brand-new communication to launch a new product, service or advantage for the relevant public. Being distinctive signals and respecting the principle of novelty for marks, they should be registered as trademarks.

The same concept should be applied to advertising slogans. However, due to their nature, as has been shown in many European Court cases (see cases T-476/08 "Best Buy" or T-281/82 "Mehrfürihr Geld"), sometimes slogans have been refused as trademarks due to their lack of distinctiveness. In this sense, before trying to register a slogan as a trademark, it has to be ascertained whether there is a possibility of protection.

1.2. Industrial Design

Industrial designs protect the ornamental or aesthetic aspect of a product, including its color, shape or lines. Industrial designs may consist of three or two dimensional features. In this sense, provided that they are new and non-obvious, creative designs used in the marketing campaign should be protected by industrial design.

1.3. Copyright

The last relevant intellectual property issue that should be considered is the copyright. Copyright is an exclusive right that protects certain forms of original works. Under this intellectual property right can be included white papers or newsletters. Landing pages and website designs can be protected by copyright as well, however, in such cases there may be an overlap between a copyright and an industrial design which is not necessarily a bad thing since they complement each other. In fact, the copyright protection is, in most countries, longer than the legal protection offered by industrial designs.

Contrary to the other intellectual property rights, a copyright is protected automatically. In this sense, despite being highly advisable the registration of a copyright is no longer required. The copyright will be protected upon its creation, without any formalities.

1.4. Other IP right: the impossibility of protecting the marketing strategy itself

Other intellectual property rights can be mentioned, however they usually have minor relevance in the intangible assets launched in the marketing campaign.

This is the case of patents or utility models. Through these intellectual property rights inventions that are industrially applicable and that contain new and non-obvious technical advances can be protected. Considering the field and strict requirements involved, it is unlikely that inventions will play a role in a marketing campaign. The only foreseeable patentable invention that may have emerged through a marketing campaign is a software program, however this kind of protection is only possible in the US, since in Europe the software is protected by copyright.

It is also important to stress that the marketing strategy itself and the campaign methods used cannot be protected. These are ideas and, as such, are excluded from any kind of protection by intellectual property rights. Only the expression of those ideas, through the means mentioned above can be protected.

2. Intellectual property marketing compliance

As has already been mentioned, a variety of communication material is usually launched in the marketing process. Apart from the protection which can be obtained through the above-mentioned intellectual property rights, there is also a risk of infringement of someone's intellectual property rights.

Bearing this in mind, it is of the utmost importance to undertake a previous effective intellectual property conformity compliance, thus protecting your business against litigation, lost profits and a damaged reputation.

Here are some examples of behaviors or situations that should be taken into account.

2.1. Trademark clearance searches

Before using any name, logo or slogan in your marketing strategy it is highly advisable to do a trademark search in order to check if your trademark is available. I say "available" since it is not simply a matter of having your trademark registered. Even though you may not wish your new brand name to be registered as a trademark, it has to be ascertained if there is any possibility of infringing third party rights.

2.2. Carefully draw the line between competition and anti-competitive behavior

Everybody knows that fierce competition may lead to marketing exaggerations and distortions. Marketing departments use several means/methods to appeal to the clients and/or customers, and these means may sometimes exceed what is legally accepted.

In terms of intellectual property rights, there is a tendency today to use well-known trademarks without obtaining prior consent. Even where the business activity is not related to the company concerned, since there is no authorization this is considered an illegal use of a trademark. It does not matter if you did not intend to damage the trademark. Any use without consent of a well-known trademark should be considered unlawful.

Another issue is the use of comparative advertisement. Despite not being illegal, no company may use this strategy to take undue advantage of the reputation of a trademark, trade name or other distinctive sign of a competitor or the designation of origin of competing products. As was stated by the European Court of Justice in the case L'Oréal SA v Bellure NV (C 487/07) - an understanding which can apply in general not only for advertisement - when interpreting Article 5(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks "taking (of) unfair advantage of the distinctive character or the repute of a mark (...) does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark (...). The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image". Actually this same understanding should be also be applied to trademark parody which is hardly acceptable nowadays under the European law.

And last of all, attention must be given to Keyword advertising. As was established in the well-known case Google France (C-236/08) the European trademark law allows proprietors of trademarks, considering under certain conditions, to forbid third parties from using signs which are identical with, or similar to, their trademarks for goods or services equivalent to those for which those trademarks are registered.

3. Final remarks

As we have seen, in terms of intellectual property rights, marketing campaigns have to be carefully delineated. In order to avoid troubles in the future it should be adopted a preventive legal strategy. In this strategy three main separated questions should be asked before launching a marketing campaign:

what should I protect to have exclusivity in my business and avoid copying?

What should I do in order to avoid any infringements of intellectual property rights?

How far can legally I go in my marketing campaign?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions