Changes in trade mark regulation
On 5 December 2018, the president signed a bill (hereinafter referred to as the "Amendment") amending, among others, the Act No. 441/2003 Coll., On Trademarks, as amended (hereinafter referred to as "AoT")[1], which came into effect on 1 January 2019. This article aims to inform about the main novelties brought by this Amendment.
The objective of the Amendment
The objective of the Amendment is to implement the Directive (EU) 2015/2436 of the European parliament and of the Council of 16 December 2015, to approximate the laws of Member States relating to trade marks (hereinafter referred to as the “Directive”) into the Czech law.
New procedure in cases of a conflict between the applied trade mark and earlier rights
The major change, which is significant for all current trade mark proprietors, is the elimination of the authority of the Industrial Property Office (IPO) to formally refuse a trade mark application in cases where the applied sign is the same as the trade mark which has been earlier applied for or registered for identical goods or services. Previously, the registration of the trade mark in such cases was only possible, had the proprietor or the applicant for the earlier trade mark given his written consent.[2]
In accordance with the Directive, the Amendment repeals this official review. In this context, the Amendment constitutes a new ground of opposition for the proprietor of an earlier registered trade mark which is identical to the sign applied for and which is granted for the same goods or services for which the sign applied for is to be registered.[3] The IPO will not register the sign in the event of such opposition, however, if the proprietor is passive and the objection is not filed in time, the sign will newly be registered even in cases where the sign applied for is identical to an already existing trade mark registered for the same products or services.
With regard to the abovementioned, we recommend increased caution to all trade mark proprietors and suggest periodic reviews of published applications at least once every two months, so that there is enough time to process and submit objections (the deadline for filing of objections is 3 months upon the date of publication of the respective application).
Good faith and invalidity of the trade mark
Concurrently, in accordance with the Directive, the grounds for formal rejection of the trade mark was ruled out for the cases when the application was not filed in good faith.[4] Simultaneously, the grounds to oppose when a third party was affected in their rights by an application which was not filed in good faith was also repealed.[5] Henceforth, the applicant's lack of good faith will only be the reason for declaring the mark as invalid. The procedure to declare invalidation of a trade mark will only be possible on the basis of a third party’s proposal, i.e. it will no longer be possible to initiate such procedure on an official basis.
Graphical representation of trade marks is no longer necessary
In contrast to the former regulation, the Amendment does not require a mandatory graphic representation of the trade mark, which used to prevent the registration of untraditional trade marks. Therefore, a trade mark may also be a designation which is not capable of being represented graphically but is expressed in a way that enables the competent authorities and the public to clearly and precisely define the subject-matter of the protection.
New types of trade marks
Another important aspect of the Amendment is that it introduces a broader scale of possible trade marks, which are specified in Annex 1 to the Amendment. Apart from the traditional word and image trade marks, it shall be possible to register a dimensional (3D), positional or patterned trade mark, a trade mark for an exclusive colour, sound, smell, movement, multimedia or holographic trade mark or any other trade mark, which does not fall under any of the listed types, given that it can be sufficiently expressed as required by law. Therefore, we can expect registrations of trade marks for a specific smell or taste in the future. We will deal with these specific trade marks in a separate article.
Certification mark
The Amendment introduces a so-called certification trade mark, the purpose of which is to inform customers that the goods or services bearing such mark meet a certain quality standard. According to the Amendment report, the certification trade mark does not aim to distinguish the respective source of goods or services, it shall only confirm and guarantee certain features. The rules for using of the certification mark are listed in Annex 2 to the AoT as amended through the Amendment.
Conclusion
The Amendment brings relatively significant changes to the Czech trade marks regulation, which are arising from the new EU legislation. We can consider this a very positive development which corresponds to the needs of the market by introducing the possibility of registration of new, unconventional types of trade marks. However, the need for increased caution of trade mark proprietors to protect their rights cannot be underestimated. According to the Amendment, it is possible to register a new trademark, identical to the one already registered for the same goods or services, in case of the proprietor’s passivity. We will continue to inform you about the news in this area.
[1] Act No. 286/2018 Sb., on amendments to Act No. 441/2003 Coll., on trade marks and on amendments to other Acts
[2] Sec. 6 AoT in the wording effective until 31 December 2018
[3] Sec. 7 subsec. 1, par. a) AoT
[4] Sec. 4 par. m) AoT in the wording effective until 31 December 2018
[5] Sec. 7 subsec. 1, par. k) AoT in the wording effective until 31 December 2018