眾律國際法律事務所

Introduction:

Language: Slovak

Capital: Bratislava

Area: 49,035 km²

Population: 5,426,252 (2015)

Currency: Euro

Religion: Roman Catholics (62%), Protestant (8%).

Geographical situation: is a landlocked country in Central Europe. It is bordered by the Czech Republic and Austria to the west, Poland to the north, Ukraine to the east and Hungary to the south.

International treaty membership:

Singapore Treaty on the Law of Trademarks (May 16, 2010)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (September 13, 1997)

Trademark Law Treaty (July 9, 1997)

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

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

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

Legislation:

Act No. 506/2009 Coll. on Trade Marks (as amended up to Act No. 125/2016 Coll.)

Government Institutions:

The Industrial Property Office

Type of trademark:

Sign, which can be considered a trade mark, shall be any sign capable of being represented graphically and consisting particularly of words, including personal names, letters, numbers, drawings, shape of goods or their packaging or their mutual combinations, if such sign is capable of distinguishing goods or services of one person from goods or services of other person.

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

Ground for refusal:

Absolute ground:

The following shall not be registered :

- signs which are devoid of any distinctive character;

- signs which consist 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 service, or other characteristics of goods or service;

- signs which consist exclusively of signs or indications which have become customary in current language or in the bona fide and established practices of trade; e) sign, which consists exclusively of a shape of goods, which results from the nature of the goods or is necessary to obtain a technical result, or gives substantial value to goods;

- signs which are contrary to public policy or to accepted principles of morality;

- signs which are of such nature as to deceive the public as to the nature, quality, geographical origin of goods or services;

- signs which contain signs registered in accordance with an international convention without the consent of a competent authority;

- sign which contains signs using of which is contrary to provisions of other legal enactment or with obligations of the Slovak Republic resulting from international treaties;

- signs which include signs of high symbolic value, particularly religious symbol;

- signs which include badges, emblems or escutcheons or other than those covered by an international conventionF 7 F without the consent of the competent authority;

- signs which are subject of application not filed in a good faith; m) signs which contain geographical indication and are filed with respect to wines or for spirits not having that origin.

Relative ground: (only upon opposition)

The sign shall not be registered upon oppositions against registration of a sign:

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

-  by the user of well known trade mark.

-  by the proprietor of a foreign trade mark, if an applicant, who is or was a representative of the proprietor of a foreign trade mark or is his representative requested the registration of a sign in his own name without the consent of the proprietor;

-  by the natural person, if using of such sign would infringe his/her rights of privacy or by the natural person entitled to set up a claim to right of privacy;

Application content:

The application shall contain:

- request for entry of the sign as the trade mark into the Register;

- information identifying the applicant;

- information identifying the representative, if the applicant is represented by a representative;

- wording or representation of the sign applied; in case of three-dimensional sign its surface representation;

- list of goods or services in respect of which the sign shall be entered as the trade mark into the Register;

- signature of the applicant or his representative.

Application process:

The duration from first filing to publication or first office action is around 4-5 months.

The date of filing the application shall be the date of delivery of the application to the Office.

The application may be amended upon request of the applicant only for the purpose of correcting the name, surname or the name, corporate name and address of permanent residence provided that such amendment came up after the application was filed and this amendment updates data contained in the applied sign without any changes to the overall character of the sign. Other amendments of the applied sign shall not be admissible after filing the application. If the sign that is subject of the application is amended after publication of the application, the application shall be re-published with amended sign. After filing the application the applicant shall be entitled to restrict the list of goods or services for which the sign is to be registered; such restriction shall not be withdrawn. No extension of list of goods or services, for which the sign is to be registered, shall be admissible after filing the application.

After the formal examination, the examination of distinctiveness is conducted, mainly based on the absolute ground for refusal. If the mark requested for protection meet the requirement it will be published in for 3 months in the monthly “Bulletin of Industrial Property Office of the Slovak Republic", opening the time for oppositions.

At the end of the opposition period, the trademark is registered and published into the State register and Official Journal if no opposition has been filed or opposition has been rejected.

Refusal:

Trademark registration can be refused by the Office if it meets one of the absolute ground for refusal, one relative ground upon action by a third person, or if the application doesn’t contain all the required documents.

An appeal may be filed against any decision of the Office within the time limit of thirty days from the delivery of the decision unless this Act provides otherwise; the appeal lodged in due time shall have suspensive effect.

Rights of exploitation and related delay:

Term of protection of the registered trade mark shall be ten years from filing date of the application. The registration of the trade mark shall be renewed upon request of the proprietor of the trade mark or of the pledge creditor for further periods of ten years. The renewal of the registration shall take effect as of the date of expiry of the registration of the trade mark. The request for renewal may be filed at the earliest within twelve months before the expiry of the registration. If the request for renewal is not filed at the latest on the day of expiry of the validity, the request for renewal of the registration is deemed not be filed but, it may be filed within the additional period of six months following the expiry of the period for filing the request for renewal of the trade mark

The proprietor of a trade mark shall have an exclusive right to use a trade mark in relation to the goods or services, for which the trade mark is registered. The proprietor of a trade mark shall be entitled to use sign ® with the trade mark.

The proprietor shall be entitled to prevent third parties not having his consent from using in the course of trade a sign, if the sign is identical or similar to an earlier trademark for same range of goods and services or if there is a likelihood of confusion for the public.

If an rights conferred by the trade mark were infringed, the proprietor of the trade mark shall have the right to apply for prohibition of an infringement or jeopardising of his rights and to remedy the consequences of such action; the proprietor of the trade mark may also claim appropriate satisfaction, including pecuniary satisfaction. The right to claim the surrender of unjustified enrichment and to claim the damages shall not be affected.  

Transfer and conditions:

The trade mark may be transferred to any person in respect of all or some of the goods or services for which the trade mark is registered. The transfer of the trade mark shall be made in writing by means of a contract.

The transfer of the trade mark becomes effective vis-à-vis third parties upon its entry in the Register. The rights of third parties acquired before the date of effectiveness of the transfer of the trade mark shall be preserved. On request of any of the parties to the contract the Office shall enter the transfer of the trade mark in the Register.

The Office shall refuse the request for entry of the transfer of the trade mark, if the transfer of the trade mark could be deceptive to the public on the nature, quality or geographical origin of the goods or services for which the trade mark is registered.

If the transfer of the trade mark could be deceptive to the public only for some goods or services for which the trade mark is registered, the Office shall refuse the request for entry of the transfer of the trade mark only in respect for these goods and services.

Certification:

The Office shall issue to the proprietor a certificate on entry of the trade mark into the Register.

Withdrawal and cancellation:

The Office shall revoke the trade mark on the request of a third party

-  if the trade mark has not been properly used for goods or services in respect of which the trade mark is registered within the continuous period of five years in the territory of the Slovak Republic; unless proved otherwise by the proprietor of the trade mark or there are no legitimate reasons for non-use.

-  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, 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, is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Customs protection:

The right holder of trademark shall submit an application to the Financial Directorate in order to protect his mark on the national market.

If the protection is allowed, it will be valid for 2 years.

The customs office is entitled to detain the goods suspected of infringing intellectual property rights. The customs office shall issue a written decision on the detention of the goods by which it also requests the holder of the goods to confirm in writing, within ten working days, or three working days in the case of perishable goods, of the delivery of the decision on the detention of the goods, whether it agrees to the destruction of the goods. The holder of the goods may file an appeal against the decision on the detention of the goods within three working days of its delivery; the appeal has no suspensory effect.

Those detained goods shall be destroyed if the court declares them as infringing goods or if the goods holder agrees on the destruction of such goods.

The customs office shall prepare an official protocol on the destruction of the goods. Before the destruction of the goods, the customs office may take samples of the goods to be used for educational purposes; such samples can be destroyed at any time.

Sources:

Wipo.int:

• Act No. 199/2004 Coll. on the Customs Act and on Amendments to Certain Acts (as amended up to July 1, 2013)
• ACT No 486/2013 Coll. of 29 November 2013 concerning customs enforcement of intellectual property rights

Vincent Lagier