On 1 January 2019 an amendment to Czech trademark legislation entered into effect. The amendment incorporates applicable EU regulations, and also introduces some country specifics. Below, we summarise the most important changes from a practical perspective:
1. The Industrial Property Office (IPO) will no longer refuse, on its own motion, the registration of trademarks that interfere with an earlier registered trademark.
Therefore, any trademark that satisfies the general conditions will be registered unless challenged within three months from the IPO’s publishing of the respective trademark application.
What does this mean for the owner of an earlier trademark?
- To prevent the registration of any interfering trademark, the owners of earlier registered trademarks will need to monitor the IPO Bulletin for newly published trademark applications and file a challenge within the three-month period.
What does this mean for the applicant?
- It is now the applicant’s responsibility to conduct research ensuring the uniqueness of their trademark in order to protect their application against possible rightful challenges.
2. New types of trademarks are accepted for registration.
Until now, trademarks had to be capable of being represented graphically. Starting 2019, trademarks can be expressed in any form capable of reproduction, provided it allows for a clear and precise determination of the subject of the trademark protection. This means that sounds, smells, positions, movements, multimedia, holographs and others can be registered as trademarks.
3. New claims arising from industrial property rights ownership are recognised.
Unauthorised use of a registered trademark in the name of a corporation and its use in comparative advertising will now be expressly recognised as a trademark infringement. This change will further enhance the protection in cases which until now were only regulated by competition law. Furthermore, the amendment introduces clear procedural rules for claims arising from trade secret infringement.
While the upcoming regulation creates new opportunities, it also imposes additional responsibilities on trademark owners, who are now accountable for the protection of their trademarks.