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1 April 2019

Amendment to the Trademark Act in the Czech Republic and Slovakia – What Should Trademark Owners Fear After 1 January 2019?

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The EU-Directive-based amendment (effective as of January 2019) is rather extensive and has introduced a number of crucial changes for trademark owners (Amendment). One of the most important ones, in our view, is that the Industrial Property Office in the Czech Republic and Slovakia has stopped ex officio refusing new applications for trademarks that are the same as earlier trademarks. As a result, the competent authority may register an identical trademark without the owner knowing. We explain how to prevent this issue of Tomas Havelka and Robert Nespurek

Tomáš Havelka and Robert Nešpůrek

Practice before the Amendment

On receiving a new application for registration of the same trademark as an earlier one in respect of the same products or services (a conflicting sign), the industrial property offices in the Czech Republic and Slovakia used to refuse such application, doing so automatically. The new trademark was not registered without the owner of the already registered trademark knowing that the same sign was being applied for. This procedure was implied in Section 6 of the Trademark Act.

Changes as a result of the Amendment

Section 6 mentioned above was abolished as a result of the Amendment in both countries. Pursuant to Directive (EU) 2015/2436 of the European Parliament and of the Council, the reason for the refusal is shifted to relative grounds for refusal laid down in Section 7(1)(a). That means that authorities ceased refusing conflicting signs ex officio as of January 2019.

What this means, in practice, is that the authorities automatically publish new applications for conflicting signs in the trademark registers, and unless the owners of identical trademarks registered earlier oppose such applications within 3 months, the conflicting signs are registered.

Solution for owners

As a result of the Amendment, the Office no longer monitors and opposes conflicting sign applications ex officio. On the contrary, the trademark owners themselves have to actively keep track of new trademark applications and lodge oppositions against conflicting sign applications within three months of their publication.

Otherwise the conflicting signs are registered as trademarks, which could turn out to be unpleasant for earlier trademark owners, but something can still be done about it. Registered trademarks can, needless to say, be revoked or invalidated, although this is a more costly and time-consuming procedure.

The most convenient way to avoid registration of a conflicting sign is to regularly monitor new applications. Our law firm has been providing this service to its clients for a number of years. The automated monitoring is carried out, as a rule, on a monthly basis. We employ it for timely detection of not only conflicting signs, but also applications that may be similar to earlier trademarks. We regularly inform clients of these applications, and then we typically launch opposition proceedings or initiate talks with the applicant to withdraw applications for conflicting signs. This monitoring can be arranged in almost every country in the world.

Further changes brought about by the Amendment

The Amendment has brought about a number of other key changes, such as new types of trademarks (e.g. sound marks, motion marks), a certificate introduced in opposition proceedings proving that an opposed trademark older than five years has been duly used, the abolition of opposition grounds in the event of filing a trademark application in bad faith, the possibility to register a certification mark, a change in the trademark registration procedure, the possibility to ban the use of a trademark in the registered name of another person and other changes. We will keep you updated on all of these changes on our blog:

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