As part of the ongoing effort to harmonise its' laws with those of the E.C. and to take further steps to address the problem of unfair competition, the Czech Republic adopted a new Act on Trademarks, entering into force on October 1, 1995.

Generally, the new law expands the scope of protection for trademark owners, clarifying the rights of holders of trade names and unregistered denominations and clarifying the procedure for collective trademarks. Additionally, it introduces the objection procedure to the application process.

If an application meets the formal requirements of the law, it is now be announced in the Bulletin of the Industrial Property Office, following which eligible parties will have a three month period in which to file objections to registration of the announced mark.

The new act includes a substantial clarification of the rights of trademark owners as compared to the previous law. The prior act allowed that no one may use, without consent, a denomination identical or confusingly similar to a trademark for identical or similar products or services for which the trademark is registered or use it in connection with such products or services; that 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; and that the trademark owner may require prohibition of infringement of his rights, suppression of the unlawful situation and to compensation for damages. The new act retains these rights and supplements them with the following:

  • 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.
  • 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 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.

The 1995 law contains the following newly propounded reasons for cancellation relating to "well known" and "generic" trademarks, among others;

  • 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.
  • 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 cancellation according to the 1995 law.
  • A trademark can now be cancelled 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 now be cancelled 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..

Other alterations as compared to the previous law include the following;
  • An applicant may now divide an application which contains several products or services until the time of entry in the Register, retaining the priority from the original application.
  • Approval of the Office is no longer required for assignments and licenses.
  • The new Act specifically states that a trademark may be provided as a security.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.