Introduction:

 

Language: Czech

Capital: Prague

Area: 78,866 km2

Population: 10,553,948 (2015)

Currency: Czech koruna (CZK)

Religion: Non religious (86%), Roman Catholics (10%)

Geographical situation: is a nation state in Central Europe bordered by Germany to the west, Austria to the south, Slovakia to the east and Poland to the northeast.

 

International treaty membership:

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (September 25, 1996)

Trademark Law Treaty (August 1, 1996)

Convention Establishing the World Intellectual Property Organization (January 1, 1993)

Madrid Agreement Concerning the International Registration of Marks (January 1, 1993)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (January 1, 1993)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (January 1, 1993)

Paris Convention for the Protection of Industrial Property (January 1, 1993)

 

Legislation:        

Law No. 441/2003 Coll. of 3 December 2003, on Trademarks

 

Government Institutions:

Industrial Property Office

 

Type of trademark:

a trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names,hologram, colours, designs, letters, numerals, the shape of goods or their packaging, provided that such sign is capable of distinguishing goods or services of one undertaking from those of another undertaking.

The following trademark types are registrable: trademarks, service marks and collective marks.

 

Ground for refusal:

Absolute ground:

The following shall not be registered

- a sign which is not capable of serving as trade mark

- a sign which is devoid of any distinctive character,

- a sign which consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of goods or of rendering of services, or other characteristics of goods or services,

- a sign which consists exclusively of signs or indications which have become customary in the current language or in bona fide and established practices of the trade,

- a sign which consists exclusively of the shape which results from the nature of the product itself or which is necessary to obtain a technical result or which gives substantial value to the product,

- a sign which is contrary to public policy or to accepted principles of morality,

- a sign which is of such a nature as to deceive the public, mainly as to the nature, quality or geographical origin of the goods or services,

- a sign applied for wines or spirits which contains a geographical indication, and such wines or spirits do not have that geographical origin,

- a sign which contains badges, emblems and escutcheons, if their use is subject of special public interest, unless the competent authority has given its consent to such signs being registered,

- a sign which contains signs of high symbolic value, mainly religious symbols,

- a sign 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,

- if it is obvious that the application for registration of the trade mark has not been filed in good faith.

 

Relative ground:

 

The sign applied for shall not be registered in the register upon opposition against the registration of the trade mark in the register filed with the Office by

- the proprietor of an earlier trade mark if because of the identity or similarity with the earlier trade mark and because of the identity or similarity of the goods or services covered by the sign applied for and the trade mark there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes also the likelihood of association with the earlier trade mark,

- the natural person whose rights to his/her name and whose rights to the protection of personal performances could be affected by the sign applied for, or by a person who is entitled to claim these personal rights;

- the proprietor of an earlier well known trade mark which is identical with or similar to the sign applied

 

Application content:

Multiple-class applications are possible.

Foreign applicants need a local agent, a non-legalized simply signed power of attorney is sufficient.

Also, foreign applicants do not need a domestic registration.

 

The application shall contain: 

a) a request for registration of the trade mark in the register,

b) the name and address of the natural person and his/her permanent address, or an address for service, if the applicant is a natural person, or the corporate name, or other name and the seat, if the applicant is a legal person

(c) Information identifying the representative, if the applicant is represented by a representative,

d) a list of goods or services in respect of which it is sought to register the trade mark, e) a representation of the trade mark.

 

 

Application process:

The processing time from first filing to registration is approx. 6 to 10 months.

Formal examination:

The office will verify if the application complies with the formal requirement described upon.

 

Substantive examination:

The office will check whether the application does not meet any absolute ground for refusal or if an earlier and similar trademark is existing.

Before registration, the trademark application is published in the weekly Official Journal of the Czech Industrial Property Office.

The owner of a similar earlier trademark for the same range of goods and product may file opposition within the period of 3 months following the publication of the application. At the end of the opposition period, the trademark is registered and published if no opposition has been filed or opposition has been rejected.

 

Refusal:

There are several case where the registration of the mark can be rejected:

Within 1 (one) month from the date of filing of the application, the applicant has to pay the administrative fee pursuant a special law; if the administrative fee is not paid within the prescribed time limit, the application is deemed as not filed. The time limit for the payment of the application fee cannot be extended and the non-observance of this time limit cannot be restituted.

If the formal requirements have not been fulfilled the Office will ask the applicant to remedy the deficiencies, if he doesn't within the time limit set by the office ( cannot be less than 15 days) the application will be rejected.

If the sign applied for does not meet the conditions for registration only in respect to some goods or services, the Office shall refuse the application as regards those goods or services. The Office shall publish the information about the decision on the refusal of the application in the Official Journal. Before the decision on refusal of an application, the Office has to allow the applicant to submit his arguments to the grounds, for which the Office intends to refuse the application.

An appeal shall lie from any decision of the Office within the time limit of one month from the delivery of the decision. The appeal shall have suspensive effect. The time limit for filing the appeal cannot be extended and the non-observance of this time limit cannot be restituted.

 

Rights of exploitation and related delay:

The trade mark shall be registered for a period of 10 years from the date of filing of the application. If the proprietor does not request the renewal of the registration, the trade mark shall lapse. The registration of a trade mark shall be renewed upon request of the proprietor of the trade mark for the period of the next ten years. The request for renewal shall be done within the last year of the protection, with a 6 months grace period after the date of expiry. After that, the time limit for filing the request for renewal of the trade mark regulation cannot be extended and the non-observance of this time limit cannot be restituted.

The proprietor of the trade mark shall have the exclusive right to use the trade mark in relation to the goods or services covered by the trade mark. The proprietor of the trade mark proves his rights by means of an abstract from the Register, or by means of a certificate of registration. The proprietor of the trade mark has the right to use the sign ® together with the trade mark.

Third parties may not use without the consent of the proprietor of the trade mark in the course of trade :

- any sign which is identical with the trade mark for goods or services which are identical with those for which the trade mark is registered;

- any sign where because of its identity with or similarity to the trade mark and because of the identity or similarity of the goods or services to which the trade mark and that sign are affixed, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trade mark;

In case of infringement of trade mark rights the proprietor of the trade mark has the right to apply to the court for an order prohibiting the infringement or the impending infringement and the consequences of the infringement be remedied; the proprietor of the trade mark may also claim appropriate satisfaction, including pecuniary appropriate satisfaction.

The owner of the rights is allowed to transfer his rights by assignment or licensing.

 

Transfer and conditions:

The trade mark may be assigned independently from any assignment of the undertaking in respect of all or some of the good or services for which the trade mark is registered. The assignment of the trade mark shall be made in writing by means of a contract. The assignment or the transfer of the trademark become effective towards third persons upon its entry in the Register; the assignee of the trade mark may take any actions towards the Office once the request for entry of the assignment or transfer has been delivered to the Office.

The right to use the trade mark may be licensed by means of a licence agreement concluded pursuant to a special legal regulation for all or some of the goods or services for which the trade mark is registered. The licence may be granted as exclusive or non-exclusive. The licence agreement becomes effective against third persons upon its entry in the register; any of the parties to the agreement may request the entry in the register.

 

Certification:

The Office shall issue to the proprietor of the trade mark a certificate of registration of the trade mark in the register.

 

Withdrawal and cancellation:

The Office shall revoke the mark:

- If, within the period of five years following the registration, the proprietor of the trade mark has not put the trade mark to genuine use for goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be revoked.

- if by the consequence of acts or inactivity of the proprietor the trade mark has become the common name in the trade for products or services for which it is registered;

- if the trade mark after the date of its registration in consequence of the use made of it by the proprietor or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

The mark will be declare as invalid upon opposition or by the Office if the mark contains a sign not registrable as a trademark or if an earlier and similar mark exists.

Where the trade mark is declared invalid, the trade mark shall be deemed never to have been registered.

The proprietor may surrender his rights to the trade mark by means of a written declaration in respect of some or all goods or services for which the trade mark is registered; the surrender shall take effect with the date of delivery of the respective declaration of the proprietor to the Office and the surrender cannot be withdrawn. The Office shall enter the surrender of the rights to the trade mark in the register and it shall be published in the Official Journal. The proprietor of a trade mark may by means of a written declaration filed with the Office limit the scope of protection in respect to an element of the trade mark.

 

Customs protection:

The proprietor of the trade mark may apply to the court to order any third party infringing or endangering his trade mark rights to withdraw from the market and to destroy goods, whose manufacturing or introduction on the market would endanger or infringe the rights protected by this Act, or to destroy materials and tools which are to be used or which are used exclusively or predominantly for activities endangering or infringing the rights protected. The court shall not order the destruction, if the person against whom the claim is directed is not the proprietor of the goods, or where the endangering or the infringement of the right could be remedied otherwise and the destruction would not be proportionate to the endangering or the infringement. The removal of the sing or the counterfeit trade mark from the goods before their introduction on the market may be allowed only in exceptional cases.

In order to claim and ensure protection of his right at border, the right holder shall submit an application before Customs Directorate. If the customs office intercepts goods suspected to be intellectual property infringement, they detains those goods for 10 days and notify the right holder who applied for the protection, or who is known by the authorities, to inspect the goods and eventually file a claim to court asking for the remedies described upon.

 

 

Sources:

 

Wipo.int :

- Law No. 441/2003 Coll. of 3 December 2003, on Trademarks

- Act No. 358/2004 of 9 June 2004, which promulgates full wording of Act No. 191/1999 Coll. of 29 July 1999 on measures concerning import, export and re-export of goods infringing certain intellectual property rights, and on amendment to some other laws, as it follows from amendments brought by Act No. 121/2000 Coll., Act No. 260/2002 Coll., and Act No. 255/2004 Coll. of 13 April 2004

 

Vincent Lagier

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眾律國際法律/專利商標事務所

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