Trademarks are Closely Regulated

Introduction
Concept
Registration
Rights
Cancellation

Introduction

Czech trademark law is regulated by Act 137/1995 on Trademarks (in force since October 1 1995, as amended by Act 116/2000), and the Decree of the Industrial Property Office Implementing the Law on Trademarks 213/1995.

Both laws provide for the concept of the trademark, as well as:

• associated rights and limitations of trademarks;

• opposition to registration of trademarks;

• cancellation of trademarks; and

• procedural rules of the Industrial Property Office.

Concept

The Trademark Act defines a 'trademark' as a sign consisting of words, letters, numerals, drawings (or of a shape of goods or their packaging), or a combination thereof, that is intended to distinguish goods or services. The trademark must be registered in the Trademark Register, which is kept by the Industrial Property Office.

Obviously audible signs and smells are not registrable. However, sequences of notes may be protected.

The Trademark Act also excludes signs from registration, for example:

• a sign cannot be represented graphically;

• a sign that is contrary to public policy or morality; or

• a sign that is deceptive or indistinctive.

According to the Industrial Property Office, the notion of indistinction is rather broadly interpreted and can include descriptiveness. A letter of consent can remove registration bars. Some registration bars (in particular indistinction) can be eliminated by proof of prior use of the trademark before the relevant application's filing date.

Registration

The trademark application may be filed by any person or legal entity. Those not resident in the Czech Republic must be represented by a lawyer or patent attorney. The goods or services to which a trademark applies should be part of the applicant's business activities. Conventional priority must be claimed in the application and the priority document must be supplied within three months of the filing date.

The application is subject to formal and substantial examination. An examiner's objections must be relayed to the applicant. The latter has a right to submit his observations to the official objections. If no bars to the registration are established the application is published in the Industrial Property Office Gazette.

The application may be opposed within three months of the date of its publication. Opposition can be raised by, for example, the owner of an earlier, similar trademark protecting the same or similar goods or services or the owner of a well-known mark, irrespective of the scope of goods or services it protects. All evidence accompanying the opposition must be delivered to the office within the same three months.

Any opposition is communicated to the applicant, who is invited to submit his observations to it. If no observations are submitted, the trademark application proceedings are discontinued. Otherwise a decision is rendered which either refuses the application (giving reasons to the opponent) or refuses opposition to it. If there are no bars to registration, the trademark is entered into the register. The applicant is granted a registration certificate, upon request. Registration is announced in the Official Gazette.

Rights

The trademark owner has the exclusive right to use, license or assign his trademark. The trademark cannot be used without the owner's authorization. The owner may demand information about the origin of goods from any person who launches goods bearing his trademark. The owner may request that the customs authority refuse to release goods that infringe his trademark rights. In civil proceedings, the trademark owner has a so-called 'cease and desist' claim, as well as a claim for compensation of damages and/or immaterial harm. The owner may also demand that the infringing goods be destroyed. The period of protection is 10 years from the filing date of the application. At the owner's request, it is possible to renew the protection for another 10 years without limitation.

Cancellation

The Industrial Property Office carries out cancellation proceedings. A trademark registration may be cancelled, either ex officio or at the request of an interested party, if it has been registered in violation of the law or has not been used from its registration date for five years before the day on which the cancellation proceedings are started.

Another basis for cancellation is when a registered trademark is confusingly similar to a well-known trademark or an earlier trademark protecting the same (or similar) goods or services.

Cancellation of a trademark must be decided by a court based the grounds of on unfair competition, copyright infringement, or infringement of personality rights or of goodwill.

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 e-mail ([email protected]).