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Trademarks Aren't What They Used To Be

Trademarks Aren't What They Used To Be

Czech Republic

Trademark owners and unconventional trademark enthusiasts should pay close attention to a new amendment to the Czech Act on Trademarks, which is expected to come into force on 1 January 2019. The new law implementing the EU's Trademark Directive 2015/2436 will enable registration of marks that are identical with an earlier trademark. This may prove upsetting for unwary trademark owners. At the same time, the new legislation might inspire greater creativity, as it will open doors for non-traditional trademarks.

Currently when a trademark application is filed, the Czech Intellectual Property Office must check that the mark applied for is not identical to any already registered trademark. This is a great service for trademark owners, who do not need to worry that someone else may have registered the same mark for the same goods or services. However, if the president signs the new legislation already approved by the Czech Senate on 15 November 2018, trademark owners will no longer be able to rely on the Intellectual Property Office. 

Starting from 1 January 2019, if an application is filed to register an identical mark, the owner of the earlier trademark will have to file an opposition with the Intellectual Property Office to prevent the registration. If the trademark owner is not vigilant, a competitor or speculator may obtain an identical trademark for identical goods or services, and two identical marks will be used on the market simultaneously. We therefore recommend that trademark owners regularly monitor new trademark applications or use professional monitoring services.

Another interesting change introduced by the new law is a more relaxed definition of trademark. At present, a sign must be capable of graphical representation to be registrable as a trademark. As of 1 January 2019, even a sign that is not capable of graphical representation may become a trademark, provided it can be represented in the Trademark Register in a manner that allows the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. 

The amended trademark definition is a game changer in terms of what can be registered in the Trademark Register. Currently, the Intellectual Property Office accepts applications for word, combined, figurative, word-graphical or three-dimensional trademarks and trademarks formed solely by color or a combination of colors. Under the new law, new types of marks, such as sound, motion, multimedia, hologram or others can be accepted because of the abolishment of the graphic representation requirement. Soon we can look forward to trademark searches that comprise playing audio and audio-visual files. Even applications for olfactory trademarks, such as the famous smell of freshly cut grass, might make a comeback. In light of the previous case law, however, it seems hard to believe that smells could successfully qualify for trademark registration anytime soon.

Other changes will be introduced too, such as certification marks or new tools to help protect trademark owners from counterfeits, as it will be possible to prevent transit of infringing goods via the Czech Republic even when counterfeits are not intended for release into free circulation on the local market. The national trademark system will now become even more harmonized with the EU system.

By Eva Bajakova, Attorney at Law  Schoenherr

Czech Republic Knowledge Partner

For more than 25 years PRK Partners has been providing top tier, comprehensive legal services in all areas of law – always at the highest professional level. The company’s offices in Prague, Ostrava and Bratislava, as well as its specialised teams of legal practitioners and tax advisors, allow PRK Partners to offer solutions to any kind of legal issues, providing an international point of view and in-depth knowledge of the respective local legal system.

The full-service law firm has worked on many of the region’s largest and most complex transactions. The firm puts emphasis on the highest standards of quality, efficiency and flexibility in its advisory services, which are tailored to the specific requirements of each client. 

Our team is composed of professionals with international education and experience. The firm frequently works on a non-exclusive basis with leading international law firms on large cross-border transactions.

PRK Partners is consistently recognised among the top law firms by leading international and domestic directories and ratings agencies and has been honoured with numerous awards: 

• National Law Firm of the Year 2016 by the Chambers Europe Awards, the most prestigious international law firm competition. This is the fifth award PRK Partners has received since the awards were first given; National Law Firm of the Year 2014, 2013 and 2010 and Law Firm of the Year 2012 for Best Client Service.

• 2018 Best Law Firm of the Year in the category of Banking &Finance and the absolute winner in the main category of the Domestic Law Firm of the Year awards organised by epravo.cz under the auspices of the Czech Bar Association three times since the award's inception (in 2016, 2013 and 2011).

• a finalist of the Central European Law Firm of the Year category in The Lawyer European Awards 2018. 

The firm has a strong commitment to corporate social responsibility and pro bono work.

PRK Partners is the exclusive member firm in the Czech Republic for Lex Mundi, the world’s leading network of independent law firms, with in-depth experience in 100+ countries worldwide. In addition, the firm is a member of Celia Alliance, AFI (Association for Foreign Investment) and CVCA (the Czech Private Equity and Venture Capital Association).

Firm's website: www.prkpartners.com

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