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.
TRADEMARK CRITERIA
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.
OPPOSITIONS
If an application meets the formal requirements of the law, it is
published in the Bulletin of the Industrial Property Office, following
which eligible parties have a three month period in which to file
oppositions to registration of the announced mark.
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
The Act includes numerous provisions regarding the rights of trademark
owners. Among others, these include:
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 the owner's business name, address, pseudonym, information
concerning the type, quality, quantity, purpose, value, geographical
origin, time of production or services, or other characteristics of the
product, although such information is identical or confusingly similar
with the trademark or constitutes a part of the 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
Other than cancellation on grounds of non-use resulting in revocation
(see separate information below), the Act includes the following
grounds, among others, to be used for seeking invalidity or revocation
of a trademark:
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.
USE REQUIREMENTS
The Czech Trademark Act requires owners of trademarks registered in the
Czech Republic to use their trademark, or otherwise the trademarks
become vulnerable to cancellation on the ground of non-use. Under the
terms of Article 25, par. 1) b. of the currently valid Act, any third
party, or for that matter, the Office of Industrial Property itself, may
initiate a cancellation action if a trademark has not been used in the
Czech Republic for at least five years before institution of a
proceeding for its cancellation. The owner of the trademark must then
prove use in earnest during the five year period preceding the first
notice of the cancellation action or, in the alternative, he must
properly explain his failure to use the trademark. The Act additionally
states that the use of a trademark by a third party by agreement shall
be considered proper use.
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.
Any actual proper use of the trademark in the Czech Republic renews the
validity in terms of use, regardless of whether it had not been used in
the immediately preceding five years or longer, because the trademark is
only subject to cancellation if the use cannot be proved for the period
of five years immediately preceding the first notice of the cancellation
action.
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.
LEGAL REMEDIES AGAINST COUNTERFEIT GOODS
Although by no means yet commonplace, it is possible for owners of
trademarks to successfully take legal steps against product pirates in
this country. The available legal remedies are based on provisions of
three different laws, namely the Commercial Code, the Trademark Act and
the Criminal Code.
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.
[ Back ] [ Intro ] [ Next ]