In a recent judgment the High Court in Prague finally decided on the procedural term for filing an opposition as stipulated in the Trademark Law 137/1995 (the version valid prior to May 10 2000).
The plaintiff filed an opposition against a published trademark application within the three-month term set out in the Trademark Law. However, the plaintiff presented no evidence to accompany the opposition until after the opposition deadline had expired.
In its first instance decision the Czech Patent Office dismissed the opposition, arguing that since the supporting evidence was filed after the opposition term had expired, it could not be considered during the proceedings.
The plaintiff appealed, stating that the opposition deadline defined in the Trademark Law did not constitute a concentration of the proceedings, and that by virtue of the general provision of the Trademark Law (which refers to the Code of Administrative Procedure in cases where there are no explicit provisions in the Trademark Law) the principles of material truth and arbitrary proceedings should apply. Thus, parties ought to be able to bring evidence and statements at any time during the proceedings.
The Patent Office confirmed the first-instance decision and dismissed the appeal.
The plaintiff filed an administrative action with the High Court asking for judicial review of the case, demanding that the previous decisions be cancelled and that the case be returned to the Patent Office for further proceedings.
The court had to decide on the interpretation of the relevant provision of the Trademark Law. According to Section 9(1) of the law, an opposition can be filed against registration of a published trademark application within three months of the date of publication. Section 9(2) stipulates that the period for filing the opposition cannot be extended. Section 10 contains special procedural rules, according to which the Patent Office must examine whether an opposition has been filed by an authorized individual within the permitted period and whether the opposition is legally justified and supported by relevant documentation. According to Section 10(2) the Patent Office will terminate opposition proceedings if the filing of an opposition is late, effected by an unauthorized individual, or not justified or supported by the necessary documentation.
The High Court adopted the plaintiff's reasoning, according to which the principle of concentration of proceedings does not apply and does not ensue from the Trademark Law. Since the principle is not expressly mentioned in the wording of the law, the legislator's mere intention for it to apply cannot not give rise to it being applied by either administrative or judicial bodies.
The application of the principle of concentration of proceedings has been clarified by the court. However, the legislator touched upon the issue in the most recent amendment to the Trademark Law (in Law 116/2000) by changing the wording of Section 9(2). Now it expressly states that neither an opposition nor supporting evidence can be filed after the three-month deadline has expired.
For further information on this topic please contact Karel Cermák at Cermák Horejš Myslil by telephone (+420 2 9616 7401) or by fax (+420 2 2494 6724) or by email ([email protected]).