Aug 11

Trademarks 2019 – news, changes and options

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Right in the beginning of 2019, a major amendment (Act No. 286/2018) of the current law regulating trademarks was adopted, fundamentally innovating the Trademarks Act (Act No. 441/2003, the “TA”) and related legislation after 15 years.
Directive (EU) 2015/2346 of the European Parliament and of the Council was thereby transposed, which will gradually lead to maximum unification of the protection and position of proprietors before the Industrial Property Office in the Czech Republic and the EU Intellectual Property Office. Another reason for the amendment was significant changes in the business environment, progress of technologies and development of the Internet, technical capabilities and electronic tools.
More than 1.35 million trademarks are currently valid in the Czech Republic. A trademark is valid for 10 years and its proprietor has an exclusive right to use it. Both natural persons and legal entities may register trademarks, often represented by an attorney-at-law or patent attorney.
1. Changes in registration
General procedure (2019): You have to fill in an application form at the Industrial Property Office, pay an administrative fee of CZK 5,000.00 or EUR 900.00 in the case of Community Trademark and wait several months for the registration. The Office will check first if the application complies with all administrative formalities required and at the second stage, it will perform a substantive research to evaluate the trademark as such. If everything is fine, the trademark application gets published. After the application is published, an objection against its registration may be filed – if no objection is filed within 3 months, the trademark gets successfully registered.
Before the amendment: The Office had to research, ex officio, if the applied trademarks are identical with any of the previously registered trademarks. Before the publication of a trademark application, the office refused to register the trademark and rejected such application due to absolute obstacles.
New procedure since 2019: The Office does not examine if trademarks are identical with any of the previously registered ones and it is fully up to the initiative and alertness of the proprietor of an older trademark to monitor whether a registration of a trademark identical to his already registered trademark has been applied for, and in such case, it is the proprietor who must file an in-time objection at an administration fee of CZK 1,000.00 and demand rejection of the more recent application in the objection proceedings. Now, as a new thing, he does not have any chance of success unless he can prove that he has been actively using his older trademark in the last five years! If you cannot prove you have been using your trademark in a relatively recent past, within a short period determined for providing the proof, you have no chance of asserting your rights to it.
Perhaps the only positive new thing is that the Office will now notify you that your trademark is about to expire; the Office did not do so before.
Note: Right after the amendment entered into effect, commercial entities started offering a paid service of regular (automated), usually monthly monitoring of trademarks and in this process, any potentially conflicting application same or similar to an already registered one should be identified in time. You would be informed about such applications as trademark proprietors via e-mail. You can also order a pre-research before you file a trademark application.
2. New trademark definition and new types of trademarks:
a) Change of definition: Previously, a trademark could have been any marking capable of graphical representation, if such marking was able to distinguish products or services of one person from products or services of another one.
Now: The requirement for “being capable of graphical representation” has been removed, giving way to new options, and a trademark can be registered now even if it is not capable of graphical representation. Such marking which is to obtain a trademark protection must be capable of distinguishing the products or services which are protected by it from identical products or services on the market provided by different business sources. It must be expressed in a way enabling to the competent authorities and public to clearly and precisely identify the subject of protection provided to a trademark proprietor.

b) New trademark types: they are listed in Annex No. 1 to the Act, defining 11 trademark types. To the previous word, shape, color and figurative (newly including word graphic and combined trademarks) trademark types, the following types were added:
Sound trademark, motion trademark, multimedia trademark, hologram trademark, position trademark, pattern trademark and any other trademark. The latter is represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner, so as to enable the competent authorities and public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. The representation may be accompanied by a description.

Conclusion:
Important new element of registration: The Office no longer examines whether an identical trademark has been previously registered and it may register also a trademark which is fully identical with a formerly registered one!!!
To sum up: increase of demands laid on trademark proprietors, increase of costs, conflicting markings do not get rejected, reduction of the so called basic protection provided by the Office to trademark proprietors.
In regard to the ever developing technologies and options, the number of trademark types grew to 11 and a trademark does not always have to be capable of graphical representation.
You must actively use your trademark and be able to prove that you are using it.