Zeiner & Zeiner
|Innovative, Timely, Expert Assistance|
|Summary of Czech IP Laws|
TRADEMARK ACT of 2004
The accession of the Czech Republic into the EU resulted in enactment of a new Trademark Act, published in the Collection of Laws of the Czech Republic under the no. 441/2003, which in its major extent became effective on April 1, 2004, but at the latest in some parts on May 1, 2004.
The new trademark law brings a number of significant changes, but the main purpose is to connect the national and European system of trademarks and to prepare the Czech legal environment for the fact that after accession of the Czech Republic CTMs will be effective on the territory of the Czech Republic. While the elements introduced with the new Act are for the most part taken directly from the CTMR, many represent new concepts for the Czech trademark practice.
The first of these new concepts is the possibility for the Czech Office of Industrial Property to refuse registration of applications made in „bad faith“. For purposes of examination of the question of bad faith, the new Act allows that any relevant condition shall be considered in order to determine whether if an application was filed in bad faith, but particularly mentions the following: whether the applicant knew or could have know about the existing rights of another person for the same or similar denomination at the time of filing of application; or whether use of such denomination would conflict with the accepted principles of morality or would damage the unique character or reputation of an existing denomination.
The new Act also introduces into the Czech law the term “trademark with a good reputation” which is distinguished from a “well known” trademark. This is defined as a trademark that the public is familiar with due to its use and that the public connects with good quality for the goods and services bearing the trademark. A trademark with a good reputation can be both a formally registered trademark and well-known trademark.
Another new element in Czech trademark law is possibility for any one to submit “observations” during the application process of a trademark without need for the person filing such remarks to be a party to the proceedings.
As far as the application procedure of trademarks is concerned, it is worth noting that a one-month period to pay official fees for filing of applications has been introduced. Failure to pay the fee in the required period will result in discontinuation of registration proceedings. The same time limit and consequences now apply in case of failure to pay official fees for oppositions, as well as in the case of fees for appeals against decisions.
Another significant concept introduced by the new Trademark Act is in the area of cancellations. Although the possibility of cancellation of a trademark for various reasons, for example non-use by the owner, existed in the previous trademark Act, the new Act also allows filing of actions seeking elimination of an improper state of affairs. In successful cases of elimination of an improper state of affairs that occurred before registration of a trademark, the new Act does not merely provide for cancellation a trademark registration; rather it provides that a trademark will be declared as being invalid.
Finally, the City Court in Prague has been designated the competent court in the area of trademarks and CTM matters in the Czech Republic.
As defined in the Act, a trademark is a sign any sign capable of being represented graphically, particularly words, letters, numerals, a drawing or a form of a product or its content, or a combination thereof, intended to distinguish products or services from different companies and registered in the Trademark Register („the Register") maintained by the Industrial Property Office („the Office").
The following are excluded from registration in the Register:
1. Any denomination that does not meet the definition of a trademark.
2. Any denomination that is not capable of distinguishing products.
3. Any denomination that consists exclusively of signs or indications serving in commerce to designate a type, quality, quantity, purpose, value or other characteristics of products or services, information on geographic origin or the time of production of any product or provision of service.
4. Any denomination that consists exclusively of signs or indications customary in standard language or used in good faith and commercial usage.
5. Any denomination formed exclusively by the shape of any product which ensues from its nature or is essential to achieve a technical result or which gives to the product a substantial useful value.
6. Any denomination that is contrary to public order or accepted moral standards.
7. Any denomination that may mislead the public, particularly about the nature, quality or geographic origin of any product or service.
8. Any denomination that enjoys protection covered by Article 6 ter of Paris Convention and in respect of which no consent of the appropriate authority to its registration has been given
9. Any denomination that includes badges, emblems and escutcheons other than those covered by Article 6 ter of Paris Convention and which are the special public interest, unless the consent of the appropriate authorities to its grant the consent to register them.
10. Any denomination that contains signs of high symbolic value, particularly religious signs.
11. Any denomination the use of which is contrary to provisions of other laws or which is contrary to the obligations of the Czech Republic ensuing from international treaties.
12. If it is obvious that the denomination applied for was made in bad faith.
Denominations falling under points 2, 3 and 4 above may be registered if the applicant proves that such denomination has become characteristic for the applicant's products or services used in business which commenced before filing the application to register the trademark.
The Office will not enter in the Register any denomination identical with a trademark with earlier priority rights which has been applied for or registered by another owner for identical or similar products or services, or which contains elements that might cause confusion with a pending trademark or a registered trademark. Such a denomination may, however, be entered in the Register if an owner or applicant with earlier priority right provides written consent to the registration of such denomination in the Register.
The protection period for a trademark in the Czech Republic is ten years from the day of filing its application with the Office. Upon the request of the owner of a trademark filed with the Office made no earlier than the last year of the protection period and no later than six months after its expiration, the protection period may be renewed indefinitely for ten-year periods.
The owner of a trademark with an earlier priority right if the presumption of confusion of the public exists because of identity or similarity with the trademark with earlier priority right and identity or similarity of the products or services related to the applied trademark.
The owner of a trademark with an earlier priority right which is identical or similar with the applied trademark if this denomination seeks registration for products or services not similar with the products or services registered for the trademark with an earlier priority right, however, the registered trademark with an earlier priority right has a good reputation in the Czech Republic and the applied denomination would profit from this characteristic or distinguishing eligibility of the trademark with an earlier priority right or it would cause the injury.
The owner of a well-known trademark with an earlier priority right if the presumption of confusion of the public exists because of identity or similarity with a well-known trademark with an earlier priority right and identity or similarity with the products or services related to the applied trademark.
The owner of a well-known trademark with an earlier priority right similar or identical with the denomination applied for if this trademark is to be registered for products or services not similar with the products or services registered for the trademark with an earlier priority right, however, it is well-known trademark with an earlier priority right with good reputation in the Czech Republic and the use of that denomination would suggest a relationship between the goods or services and the proprietor of the earlier well known trade mark .
The owner of a Community trademark with an earlier priority right which is identical or similar to trademark applied for if this denomination is to be registered for goods or services which are indeed not similar to those goods or services covered by the earlier trade mark, but the earlier trade mark has a good reputation in the territory of the European Communities and the use of the sign applied for would without due cause take unfair advantage of or would be detrimental to the distinctive character or the reputation of the earlier Community trade mark.
The owner of a trademark in case that the application was filed by an agent or representative of the trademark owner under the Article 6 septies of Paris Convenience in his own name and without consent of the owner, unless the agent or representative justifies his action.
The holder of a non-registered trademark or other denomination used in commerce of more than mere local significance for identical or similar products or services that are identical or similar with applied denomination, and the right to this denomination arose before filing of the application.
A natural person whose right to a name and protection of personality might be injured by use of the applied trademark.
The owner of an earlier copyright if this right might be infringed by use of the applied trademark.
The owner of an earlier industrial property right if this right might be infringed by use of the applied trademark.
Anyone whose rights have been infringed by a trademark application applied for in bad faith.
The 3-month period for filing objections to the entry of a published trademark may not be extended. Any objections or evidence in support of an objection filed after the period must be disregarded by the Office.
RIGHTS ARISING FROM TRADEMARK
No one may use, without consent, a denomination identical or confusingly similar to a trademark for identical or similar products or services for which a trademark is registered or use it in connection with such products or services.
The Customs Office shall not release any goods of commercial nature into free circulation if their marking infringes the rights of the owner of a trademark.
A trademark owner may require prohibition of infringement of his rights, suppression of the unlawful situation and to compensation for damages.
- No one may, without consent, place an identical or confusingly similar denomination on identical or similar products or services for which the trademark is registered or use it in connection with such products or services, their packaging, offer, store or introduce in the market, import or export products with such denomination or use the denomination in any business name, correspondence or advertising.
The owner of a trademark has, vis-a-vis any person who introduces or intends to introduce in the market products or services, the right to information on the origin of the products or documents accompanying the products or services on which there is a denomination identical or confusingly similar with its trademark. Note that the Act also states that a court shall not adjudicate the right of information if it is disproportionate with the seriousness of the threat or infringement.
The owner of a trademark is entitled to request the publisher of any publication in which the trademark is reproduced to publish the information that it is a trademark, including the registration number of the trademark.
The owner of a trademark may petition a court of justice to prohibit parties from using its trademark or denominations confusingly similar to it for identical or similar products or services and for any articles marked in a manner infringing its rights to be withdrawn from the market. The owner of a trademark may request a court to order an infringer to destroy products, the production or introduction to the market of which, caused the right protected by this law to be threatened or infringed, and if appropriate, to destroy materials or instruments intended to or used exclusively or primarily for the activities threatening or infringing the rights protected by this law. The court shall not order the destruction if the products are not in ownership of a person against which the request is made or if the threat or infringement of the right could be removed otherwise and destruction is not adequate in comparison to the threat or infringement. Removal of a denomination or a counterfeited trademark from the products before their introduction to the market may be permitted only in extraordinary cases.
The owner of a well known trademark may exercise its rights regardless of the identical or similar nature of products or services if the use of a well known trademark points to a relationship between any products or services thus marked and the owner of a well known trademark and if the interests of the owner of a well known trademark were infringed by such use.
If any damage has been caused by any infringement of the rights attaching to a trademark, the injured party is entitled to compensation therefor. If any prejudice of non-financial character has been caused, the injured party has a right to reasonable satisfaction, which may consist of financial compensation.
LIMITATIONS ON RIGHT OF TRADEMARK
The owner of a trademark must tolerate any third parties using in the trade of a denomination identical with the trademark if this is essential to indicate the purpose of a product, particularly its accessories or spare parts, provided such information is used in conformity with commercial practice and within the framework of fair competition.
The owner of a trademark must tolerate the use of an identical or similar denomination by its holder if rights to such denomination were created prior to the date of filing of the trademark and use of the denomination is in accordance with the law.
The owner of a trademark is obliged to suffer further use of an identical or confusingly similar trademark with later priority right if it suffered the use for a period of 5 years from the date that it learned of such use, unless the trademark application with later priority right was not filed in good faith.
The owner of a trademark with later priority right is not allowed to prohibit the use of an identical or confusingly similar trademark with earlier right of priority, even if the owner of a trademark with an earlier priority right could not exercise its rights according to the Act.
A trademark does not entitle its owner to prohibit its use on products that have been introduced in the market by the owner or with the owner's consent, unless after the introduction of the products in the market a substantial change or deterioration of their condition or characteristics occurred. The proprietor of a trademark is not entitled to prohibit its use in relation to goods that have been put on the market in a member state of the European Communities or in another member state of the European Economic Area under that trademark by the proprietor or with his consent.
REVOCATION AND INVALIDITY
The applicant was acting in bad faith when he filed the application for registration.
The trademark was registered in breach of provisions of the Act on absolute grounds for refusal of registration, unless the subject trademark has acquired distinctiveness for the goods or services it is registered for though subsequent use.
If it is determined during proceedings instituted at the request of the owner of a well known trademark, that the use of a contested identical or confusingly similar trademark would result in unjustifiable profit from the distinguishing capacity or good reputation of the well known trademark or cause any prejudice thereto, regardless of whether the contested trademark was registered for identical or similar products or services, the contested mark will be cancelled. However, it is important to note that if the owner of the well-known trademark knowingly allowed the use of the contested trademark in the Czech Republic for five years from its registration, the cancellation will not be approved.
A trademark can be invalidated on the basis of a court ruling according to which a trademark containing the name and surname or pseudonym of a natural person has been determined to infringe the personal protection laws or according to which a trademark containing the name or business name of a legal entity negatively affects its reputation or infringes the copyright laws.
A trademark can be revoked on the basis of a court ruling according to which the use of an identical or confusingly similar trademark is unfair competition, since it unjustifiably profits from the distinguishing capacity or good reputation of a well-known trademark or is prejudicial thereto. Such proceeding must be started within 6 (six) months following the date on which the court decision declaring the use of a trademark to be unfair competition conduct becomes final.
Any trademark found, during proceedings instituted at the request of a third party, as having lost its distinguishing capacity due to the activity or inactivity of its owner, having become a denomination normal in commerce ("generic") for the products or services for which it is registered, will be subject to revocation according to the law.
It should noted that the use of a trademark which commenced or continued after the expiration of 5 years of its non-use, but in the period of three months before the institution of the cancellation proceeding, will not be taken into account. The use of a trademark shall also be understood as its use in a form that differs from the registered form in details not affecting its distinguishing capacity, or its placement on products or packaging exclusively for purpose of export.
Resulting from the text of the above-mentioned provision, one can assume that any newly registered trademark enjoys the benefit that during the first five years after its registration it does face any risk of cancellation based on non-use. However, immediately thereafter any unused trademark may be attacked by any third party. In case of such an attack, the burden of proof that use was initiated in earnest or that proper justification for non-use exists will be on the trademark owner.
Actual use does not have to be proved to the Office of Industrial Property independent of a cancellation action and, provided a trademark is not attacked under the use requirement provisions, it would remain valid in spite of the fact it has not been used.
Unfair competition in the Czech Republic is generally regulated in sections 44-55 of the Commercial Code. The general definition of unfair competition under Czech law is " conduct that is contrary to the standard practices of competition and conduct that may be detrimental to consumers and competitors." sec 44. The act then lists several specific acts, which are to be considered as acts of unfair competition, notably for matters of product counterfeiting:
Sec 46: Deceptive marking of goods or services: This is defined as marking of goods or services in such a manner that it may create an erroneous impression in business circles that the goods or services so marked originate in a certain country, region or location or are made by a certain producer. It is irrelevant whether such markings appear on the goods, packaging, in commercial documentation, etc. or whether the deceptive marking was provided directly or indirectly, or by what means.
Sec 47: Acts contributing toward mistaken identity: These acts include use of a specific designation, a specific pattern or a specific design related to products, services or business documentation which consumers associate with a certain enterprise (e.g., packaging, printed matter, advertising materials, etc.) if capable of creating the danger of mistaken identity in respect of a certain enterprise, its commercial name, its special designations, products or services. Acts contributing toward mistaken identity shall be considered the imitation of another product, its packaging, etc. unless this imitation involves elements which are predetermined functionally, technically or aesthetically, and the imitator has taken every possible measure which could be required of him to avoid the possibility of mistaken identity, or at least has restricted such danger substantially.
Sec 48: Misappropriation of reputation: This is defined as making use of the reputation of the enterprise of a competitor, its products or services in order to gain extra benefits for one's own or another's business activity which would otherwise not be achieved by such person.
From the procedural point of view, an action based on the above provisions would be brought in a district or commercial court, depending on the circumstances. The plaintiff in such an action can claim preliminary and permanent injunctive relief, damages, surrender of unjustified enrichment and publication of the final decision. It would be possible to receive a preliminary injunction if the plaintiff so requests and the court decides based upon the offer of evidence in the petition that it is necessary to temporarily regulate the relations of the parties or if there is a risk to the ultimate execution of the final decision. As the court does not normally have a hearing on the request for preliminary injunction, it is exceptionally important that the petition presents clear evidence of the need for the injunction.
Rights of trademark owners are set forth in sections 14 and 15 of the present Act on Trademarks. Article 14 (1) states that no one may use, without the consent of the owner of a trademark, a denomination identical or confusingly similar to the trademark for identical or similar products or services for which the trademark is registered or use it in connection with such products or services; in particular, place it on products or their packaging, offer or introduce in the market products thus marked or store them for this purpose, import or export products with such denomination or use the denomination in any business name, correspondence or advertising.
The Trademark Act specifically allows that the owner of a trademark has, vis-a-vis any person who introduces or intends to introduce in the market products or services, the right to information on the origin of the products or documents accompanying the products or services on which there is a denomination identical or confusingly similar with its trademark. Furthermore, at the request of the owner of a trademark, the Customs Office shall not release any goods of commercial nature into free circulation if their marking infringes the rights of the owner of the trademark.
Article 15 (1) of the Trademark Act allows that the owner of a trademark may petition a court of justice to prohibit parties from using its trademark or denominations confusingly similar to it for identical or similar products or services and for any articles marked in a manner infringing its rights to be withdrawn from the market. If any damage has been caused by any infringement of the rights attaching to a trademark, the injured party is entitled to compensation therefor. If any prejudice of non-financial character has been caused, the injured party has a right to reasonable satisfaction, which may consist of financial compensation.
Finally, under the provisions of the Criminal Code, individuals can be criminally liable for infringement of trademark rights. The relevant provisions of the Criminal Code state that "an individual selling products bearing the trademark of another party who has exclusive right to such trademark, or selling products bearing a mark which is confusingly similar, without permission, may be punished by imprisonment of up to six months, monetary fine or forfeiture." Monetary fines may be levied if the defendant obtained or attempted to obtain monetary benefit from his intentional acts. Forfeiture may be imposed on items used in the commission of the crime or acquired as a result of the crime.
Generally the regional or commercial civil courts would be involved in the obtaining decisions based on violations of the Commercial Code or the Trademark act, with the exception that matters involving the validity or cancellation of a trademark are decided first by the Office of Industrial Property. Enforcement of these decisions would primarily be the responsibility of the courts, through use of court officers or customs authorities. As for the Criminal Code, the basis for a prosecution would either be with the police or directly with the state prosecutor.
|Innovative, Timely, Expert Assistance|