The legal system of Macao is based on the Portuguese legal system, which is part of the continental law system in Europe. Therefore, just like the situation in continental Europe, Macao uses the expression intellectual property rights both legislatively and academically. Although Article 1302 of the Civil Code⁽¹⁾ applied in Macao refers to the expression intellectual property rights, the two major contents of intellectual property rights – copyright and industrial property – are respectively defined by two special laws – the Copyright Code and the Industrial Property Code.

Presently, the major legal framework to regulate copyright affairs in Macao is still the aforesaid Copyright Code⁽²⁾. This law was extended from Portugal to Macao for its application in the region in 1972. Most contents of this law originate from a draft law worked out by local legislators in Portugal in the 1950s.

As a result of rapid development of science and technology and the occurrence of completely new types of copyrights across the world over the past more than 20 years, many relevant issues have not been covered by the scope of application of the Copyright Code. In an effort to clog loopholes in relevant law, Macao legislators have formulated some separate legal instruments, mainly including Decree-Law No. 4/85/M issued on November 25, 1985, which was intended to regulate rights derived from copyright. This decree-law, however, is only limited to banning unauthorized reproduction of audio-visual works, and has not provided for any feasible control measures. Moreover, there have occurred widespread unauthorized reproduction and sale of computer programs and audio-visual works in Macao over recent years, causing heavy losses to relevant intellectual property rights owners. In view of such a situation, Macao legislators, even in the process of drafting and formulating the new Copyright Code of Macao, have urgently formulated a number of provisional legal instruments to check activities of piracy in the region in a timely manner, such as Decree-Law No. 17/98/M issued on May 4, 1998.

After the promulgation and entry into force of the new Copyright Code of Macao by the end of 1999, Macao will have a relatively complete copyright law. The promulgation of this law will not only mean a modern response of Macao to the call for protecting copyrights in the region, but will also mean Macao’s fulfillment of an international obligation for protecting intellectual property rights as a member of the World Trade Organization.

As the day of Macao’s return to China is approaching, there is plenty of work to do appropriately to "localize" the industrial property law in the region. The old Industrial Property Code of Macao, which was published in Macao Official Gazette on March 24, 1959, was actually an extension of the Industrial Property Code of Portugal for application in Macao. On April 20, 1987, Macao Official Gazette published Decree-Law No. 40/87, which introduced a number of amendments into the Industrial Property Code. This decree-law was also extended from Portugal for application in Macao. On January 24, 1995, Portugal promulgated a completely new Industrial Property Code in the country, which replaced the old Industrial Property Code in total. On September 4, 1995, Macao legislators inexplicably and surprisingly published the full text of this new law in the 36^th Issue of Macao Official Gazette, to extend it for application in Macao. So far, no Chinese version of this new law has been issued. All these moves run contrary to the process of "localizing" laws in Macao, which is being positively advocated in the region. On November 6, 1995, the 45^th Issue of Macao Official Gazette published Decree-Law No. 56/95/M, which was actually the trademark law of Macao. This trademark law went into effect on December 6, 1995, suspending the application in Macao of part of the provisions of the Industrial Property Code of Portugal. Afterwards, Macao legislators formulated a number of administrative legal instruments as detailed provisions on the enforcement of this trademark law.

However, the approaches of Macao legislators to "localize" the industrial property law in the region have actually created some gray spots in legal practice, resulting in a series of problems that need to be solved through judicial or theoretical interpretation.

The trademark law of Macao classifies trademarks as commercial or industrial trademarks, handicraft trademarks, collective trademarks and serial trademarks. Collective trademarks refer to the trademarks that institutions for supervising or overseeing economic activities have the right to use in accordance with their purposes as well as relevant statutes or organic laws. The registration of such trademarks is intended to mark the services and products of economic activities under the supervision and control of such institutions. As far as serial trademarks are concerned, the trademark law of Macao permits the inclusion in a same registration claim of a series of same trademarks, which are different from one another only by the products or services under them. In terms of legal effect, each one in a series of trademarks is independent of others, but the ownership of any series of trademarks is inseparable. Moreover, each series of trademarks will be granted only one trademark registration serial number. Each one in a series of trademarks is itemized with a letter to differentiate it from others. Besides, applicants can apply for the registration of "stereo trademarks." In this respect, colors only can not make trademarks, but colors can be used to combine with the designs and words in trademarks or words and other essential factors of trademarks through arrangement in a unique and remarkable way, except for the condition that parties interested apply for relevant protection.

Trademarks are registered in accordance with the types of products or services concerned. Macao Directorate of Economic Services, in the capacity of a competent authority, has formulated a table for classifying trademarks in accordance with the international way of trademark classification.

In Macao, Chinese and either Portuguese or English can be used in trademarks, and the use of all the three languages in a same trademark is also allowed. However, any language can be used in trademarks on export-oriented products. The compulsory use of Chinese and either Portuguese or English is not required of the application for registering trademarks for international trade and of foreign applicants without a place of business in Macao.

Firstly, before applying for the registration of trademarks in Macao, parties interested do not have to investigate whether other trademarks identical or similar to theirs have been registered in the region. In applying for the registration of a trademark, applicants themselves or their agents only need to fill in a consolidated form supplied by competent authorities in a local official language (Chinese or Portuguese) with relevant data, attach a photo-lithographic plate of the trademark to the form, sign it and submit to the competent authorities. Moreover, attorneys can take general actions to apply for the registration of trademarks (including the filing of applications) in the name of their clients and in the interest of them. In doing so, they do not have to show a trust deed. This saves the applicants, particularly foreign applicants, a complicated procedure to issue trusts deeds to their agents in Macao.

In principle, if there occur several applications for the registration of a same trademark, priority will be given to the party that first files an application for the registration of this trademark. However, this policy is restricted by the following exceptions:

a. That applicants can take advantage of the priority given by the Paris Convention for the Protection of Industrial Property;

b. That if an applicant has used an unregistered trademark for a period not exceeding six months, he will enjoy the priority to apply for the registration of this trademark within this period; and

c. That the owner of an internationally well-known trademark, if he has already filed an application for the registration of this trademark in Macao or if he files an application for the registration of this trademark in Macao while applying for the rejection of another’s party’s application for the registration of a similar trademark, will enjoy the priority for applying for the registration of this trademark in Macao.

After receiving a number of applications for the registration of trademarks, making an initial view of them and classifying the trademarks concerned, competent authorities will publish these applications in Macao Official Gazette on a monthly basis. Anyone who considers that the approval of a trademark will damage his interests can raise an objection to the chief of Macao economic department within 90 days counted from the date of publishing the application concerned. After receiving a statement of objection, the economic department will notify the applicant of the objection within 15 days, and the applicant can present a statement of defense within 30 days counted from the date of receiving the notification. Within 15 days after receiving the statement of defense, the economic department will notify the party raising the objection of the development of defense. After a party interested presents a statement of objection or defense or after a relevant time limit expires, competent authorities will proceed to review the application for the registration of the trademark and make a decision on it.

After competent authorities make a decision to reject or approve the registration of a trademark, if a party interested has raised an objection, the applicant whose application for the trademark registration has been rejected, the party that has raised an objection to its registration or an inheritor to either of the two parties can lodge an appeal to a general court in Macao that has the jurisdiction over the issue within 30 days counted from the date of announcing the decision on the rejection or approval. If the party interested considers a judgment of the general court as unacceptable, it can lodge an appeal to a higher court in accordance with the proceedings procedure. That’s to say, if no one raises an objection in the process of registering a trademark, there will not be such a procedure of appeal.

The registration of a trademark will be effective as of the date of its approval, and will have a duration of seven years counted from the date of filing the application. The application for renewing the registration of a trademark must be filed six months ahead of the expiration of the seven-year term.

The owner of the right to a registered trademark is free to transfer the ownership of the trademark, set liabilities on it and grant permit for the use of it. However, if the party concerned has not applied to competent authorities for adding relevant annotations to the trademark and the registration of the trademark has not been published in Macao Official Gazette, the transfer of its ownership, the set of liabilities on it or the grant of permit for the use of it will not be effective to a third party. Moreover, for the rights derived from the application for the registration of a trademark pending in the process of registration, they can also be transferable by the applicant, and can confront a third party only in accordance with the aforesaid stipulation.

For illegal acts to infringe trademark right, the Macao trademark law defines the following acts as criminal acts:

a. To fully or partially forge or duplicate a registered trademark by any means without consent from the lawful owner of the trademark;

b. To fully or partially forge remarkable characteristics of a registered trademark;

c. To use a false or forged trademark;

d. To use the registered trademark of another party on one’s own products or services in a fraudulent way;

e. To use a registered trademark of one’s own on products or services of another party in a fraudulent way, to make consumers mistake the origin of the products or services;

f. To import, sell or sell on commission or to put into circulation products or services that have been forged, modeled or that bear trademarks used in a fraudulent way as defined by the preceding items; and

g. To use a collective trademark under conditions not defined by the statute or organic legislation on the incorporation of businesses.

The maximum punishment for a criminal act defined in the above is a one-year prison term or a fine of 5,000 Macao patacas to 500,000 Macao patacas, but the maximum punishment for a repeated offense is a two-year prison term or a fine of 50,000 Macao patacas to 1 million Macao patacas. On the possible prosecution and punishment of offences committed through negligence not defined by the aforesaid provisions, the Criminal Code of Macao stipulates that only the acts committed through negligence that are particularly defined by law will be punishable. Namely, only intentional offenders meant to infringe the trademark right of others will receive criminal punishment. However, victims, because of their losses, can demand the establishment of the legal responsibilities of the offender, including civil responsibilities, in accordance with general law provisions.

For acts of unfair competition, the trademark law of Macao, on the one hand, has a general provision defining that all the acts of competition in violation of any legislation of the economic sector and principles for credible operation constitute acts of unfair competition. On the other hand, it defines the following acts as acts of unfair competition:

a. All acts to take any measures to cause chaos to the place of business, products, services or credibility of the rival party in competition;

b. Acts to use false statements to damage the place of business, products, services, credibility or reputation of the rival party in competition, in the operation of industrial, commercial or service businesses;

c. To have unauthorized quotation or reference in an attempt to gain interests for oneself from the credibility or reputation of the name of places of business, trademarks, products or services of others;

d. In respect of the relevant place of business, or the capital or financial situation of the proprietor, the nature or scope of his business and conduct as well as the identity and quantity of customers, to make a false statement on the credibility or reputation of such a type of place of business or its proprietor in an attempt to gain interests for oneself;

e. To make a fraudulent advertisement or false description or statement on the nature, quality and purposes of products or services;

f. To make a false statement by any means on the origin of products, including the place, area or region of production, and on the workshop, farmland or place of business;

g. To delete, cover up or alter on the part of the seller or broker the name of the original manufacturer of products for sale or the registered trademark of the producer or manufacturer without changing the storage condition of the products concerned; and

h. To illegal obtain, use or divulge the business secret of others.

However, in accordance with the trademark law of Macao, acts of unfair competition are no longer specific criminal acts, and victims of unfair competition can only demand the establishment of the legal responsibilities of the offender in line with general law provisions, including possible criminal responsibilities and/or civil responsibilities.

As stated in the above, for the work to "localize" law on intellectual property rights in Macao, there are now many issues which need to be settled appropriately. In particular, the local legislature of Macao needs to promulgate and put into effect the copyright law of Macao by the end of 1999. This law should include a series of provisions and systems on copyright and other rights derived from it that are in accordance with the present-day international convention and the trend of scientific-technological development. The Industrial Property Code of Portugal introduced into Macao in September 1995, as mentioned in the above, needs to be further "localized" either in terms of its form or contents. Otherwise, the Macao SAR will have to continue applying after 1999 the laws extended from Portugal on relevant issues, including patents, industrial designing, business names and service marks, and the competent authorities on these issues will continue to be the national industrial property department of Portugal, which will be unimaginable and will contravene China’s sovereignty.

At first glance, it seems that the trademark law of Macao does not need to be "localized" immediately as the Macao government promulgated and put into effect Decree-Law No. 56/95/M in November 1995, which was actually the trademark law of Macao. This can be nothing but a superficial phenomenon because only one-fifth of the approximately 20,000 trademarks registered in Macao are regulated by the trademark law of Macao, which were registered after the trademark law of Macao went into effect, and the other trademarks registered in the region (approximately 15,000) are still regulated by the Industrial Property Code of Portugal and are still under the jurisdiction of the national industrial property department of Portugal. However, in accordance with the principle of national sovereignty, this is an unacceptable fact. So, the jurisdiction over these trademarks registered in Macao should be turned over to Macao as soon as possible before the region return to China on December 20, 1999. Moreover, the term of validity of registered trademarks will be 10 years under the Industrial Property Code of Portugal, but it will only be seven years under the trademark law of Macao. In view of such a situation, what is questioning and worrying is: how long should be the term of validity of Macao’s registered trademarks after December 20, 1999, even after the jurisdiction over them is turned over to Macao? Should it be 10 years or seven years? If it remains to be 10 years, there will be no legal basis for it because the Industrial Property Code of Portugal, as a foreign law, will no longer be applicable in Macao after 1999. If it is seven years, it seems to contravene the law of nature that acquired rights should be protected. Therefore, these are issues much cared about by legal experts. They should arouse attention from competent authorities and should be settled appropriately.

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