The Czech Patent Office recently ordered the cancellation of a trademark on the basis of its deceptive character.
The plaintiff, a foreign company, owned a trademark that was registered for wines under Class 33 of the Nice Agreement. The plaintiff regularly imported wines bearing its trademark into the Czech Republic prior to the filing date of the trademark.
The defendant, a Czech business entity, registered an almost identical trademark for various alcoholic and non-alcoholic beverages under Class 32, and for educational and entertainment activities and cultural agency business under Class 41.
The plaintiff requested cancellation of the defendant's trademark.
The Czech Patent Office dismissed the plaintiff's action in the first instance, since the plaintiff's reasons for cancellation of the defendant's trademark could have served only as a basis for opposition. However, upon appeal of the plaintiff, the Czech Patent Office examined the attacked trademark as to its possible deceptive character and ruled that the use of a similar trademark by an entity other than the plaintiff constituted a form of deception as to the origin of the goods. Since the plaintiff had delivered goods into the Czech Republic long before the filing date of its trademark, it could be assumed that the trademark had become characteristic of the plaintiff among Czech consumers.
The Patent Office concluded that the defendant's trademark had been registered contrary to Section 2(1)(g) of the Law on Trademarks, which bars registration of marks on the basis of deceptive character. Accordingly, the defendant's trademark was removed from the Trademark Register.
The Patent Office's decision revisits the issue of pirate trademarks that are registered in bad faith. It shows that the Patent Office will consider the issue of a trademark's deceptive character (as well as an applicant's good faith) even after registration. Now the legitimate owners of trademarks which have been effectively stolen can defend their rights and demand that deceptive marks be cancelled.
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]).