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Trademarks Aren't What They Used To Be

Trademarks Aren't What They Used To Be

Czech Republic
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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

PRK Partners, one of the leading Central European law firms, has been helping clients achieve their business objectives almost 30 years. Our team of lawyers, based in our Prague, Ostrava, and Bratislava offices, has a unique knowledge of Czech and Slovak law and of the business environment. Our lawyers studied at top law schools in the United States, United Kingdom, Switzerland and elsewhere. They also have experience working for leading international and domestic law firms in a number of jurisdictions. We speak your language, too. Our legal team is fluent in more than 15 languages, including all the key languages of the region.

PRK Partners has one of the most experienced legal teams on the market. We are consistently rated as one of the leading law firms in the region. We have received many significant honours and awards for our work. We represent the interests of international clients operating in the Czech Republic in an efficient way, combining local knowledge with an understanding of their global requirements in a business-friendly approach. We are one of the largest law firms in the Czech Republic and Slovakia. Our specialised teams of lawyers and tax advisors advise major global corporations as well as local companies. We provide comprehensive legal advice drawing on our profound knowledge of local law and markets.

Our legal advice delivers tangible results – as proven by our strong track record. We are the only Czech member firm of Lex Mundi, the world's leading network of independent law firms. As one of the leading law firms in the region, we have received many national and international awards, in some cases several years in a row. Honours include the Chambers Europe Award for Excellence, The Lawyer and Czech and Slovak Law Firm of the Year. Thanks to our close cooperation with leading international law firms and strong local players, we can serve clients in multiple jurisdictions around the globe. Our strong network means that we can meet your needs, wherever you do business.

PRK Partners has been repeatedly voted among the most socially responsible firms in the category of small and mid-sized firms and was awarded the bronze certificate at the annual TOP Responsible Firm of the Year Awards.

Our work is not only “business”: we have participated on a longstanding basis in a wide variety of pro bono projects and supported our partners from the non-profit sector (Kaplicky Centre Endowment Fund, Tereza Maxová Foundation, Czech Donors Forum, etc.).

Firm's website: www.prkpartners.com

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