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