A trademark owner has several possibilities to defend against a breach of trademark rights. The Czech legal system provides various means of protection, both substantive and procedural. In a recent development, the procedure of detention of goods infringing on intellectual property rights applied by custom authorities has been simplified based on an amendment to the Czech Antipiracy Act.
Czech law provides a wide range of legal means of protection against a breach of trademark rights. Besides claims of a private-law nature, the trademark owner may take advantage of certain procedural instruments, such as a preliminary injunction, on the basis of which effective legal protection may be quickly granted. The owner of a trademark may also initiate proceedings to be carried out by customs authorities pursuant to Act No. 191/1999 Coll., Czech Antipiracy Act or Act No. 634/1992 Coll., Czech Consumer Act, if the prerequisites for commencing such a procedure are met.
Legal protections under the Enforcement Act
The main law protecting industrial property rights is Act No. 221/2006 Coll., the Enforcement Act, which implements EC Directive 2004/48/ EC. Under the Enforcement Act, a trademark owner may assert claims in cases of a breach of rights resulting from a trademark which consists in: (i) an injunction prohibiting the continuation of the infringement, (ii) the recall and/or destruction of goods infringing the trademark right, or the destruction of materials or implements exclusively or principally used for activities that breach or endanger the respective trademark right, (iii) the publication of the judicial decision at the infringer’s cost, (iv) a claim for damages, (v) the redress of unjust enrichment, (vi) adequate compensation, and (vii) disclosure of certain information regarding the goods infringing on the trademark right and information on persons dealing with such goods.
To make it easier to determine the value of the claim, the Enforcement Act allows the trademark owner to request compensation of at least a double licence fee. If there is no fault on the part of the infringer, the amount of at least adequate licence fees can be claimed. The licence fee is based on the common fee that would have to be paid on the market for a licence at the time of the unlawful interference, as determined by an expert.
Protection under the Civil Procedure Code
A preliminary injunction under Act No. 99/1963 Coll., the Civil Procedure Code is the most effective way to make the infringer quickly stop the infringing. The court may issue a preliminary injunction if there is a need to preliminary regulate the relationship between the parties; for example, if the trademark owner could incur harm while awaiting a final decision in the main proceedings. When requesting a preliminary injunction, the claimant must deposit CZK 50,000 (EUR 2,000) with the court. The claimant must prove a preliminary injunction is necessary and also provide evidence that a trademark right is being infringed or is about to be infringed. The claimant must reimburse any damage caused to any person by the preliminary injunction if it loses in the main proceedings.
Measures by custom authorities
According to the Czech Antipiracy Act, the trademark owner may apply in writing to the customs directorate, Hradec Králové, for action by the customs authorities related to goods within their supervision and suspected of infringing on intellectual property rights. The customs authority may suspend the release of the goods. Moreover, if the conditions set forth in the Antipiracy Act are fulfilled, the customs authority may have goods infringing on trademark rights destroyed, or use them for humanitarian purposes after removing the infringing trademarks from the goods.
The process of detention and destruction of counterfeit goods has been simplified through the amendment to the Czech Antipiracy Act that came into effect on 1 August 2011. Customs authorities now have the right to seize goods from purchasers or shippers if they suspect an infringement of trademark rights and if the goods are not handed over voluntarily. Customs may also seize fakes and imitations of branded goods if their owner cannot be found. The destruction is in such case at the expense of the trademark owner.
Customs authorities also have significant powers under the Consumer Protection Act. Customs officers are authorised (including upon a motion by the trademark owner) to inspect whether consumers are being deceived by an offer or sale of goods infringing on intellectual property rights. If so, the officer may order the seizure of the products or goods. In a subsequent proceeding, the goods may be destroyed.
Czech law provides a wide range of legal means of protection against a breach of trademark rights, from seizure of goods to monetary claims. Each, however, has a narrow scope. It is thus important to determine the most suitable type of protection.
The customs authority may suspend the release of the goods. Moreover, if the conditions set forth in the Antipiracy Act are fulfilled, the customs authority may have goods infringing on trademark rights destroyed, or use them for humanitarian purposes after removing the infringing trademarks from the goods.