Non Conventional Trademarks In The Slovak Republic

29 June 2011

Radovan Repa

Pursuant to Section 2 of the Slovak Trade Mark Act (Act No. 506/2009 coll. on Trade Marks) a sign can be registered as a trade mark by the Industrial Office of the Slovak Republic (the “Office”) if it is capable of being represented graphically and consists of words, including personal names, letters, numbers, drawings, shape of goods or their packaging or their mutual combinations, provided that such sign is capable of distinguishing the goods or services of one person from the goods or services of another person.[1] 

Therefore, in addition to being capable of being represented graphically, a sign must be distinctive to be registered as a trade mark by the Office.

1) Signs which consist of smells, sounds, lights, motion, etc.
The Office has held that smells, sounds, lights, motion etc. are not capable of being represented graphically and cannot therefore be registered as trade marks under Slovak trade mark law.  We are not aware of any proceedings in which registration of such signs has been sought. This may be due to the clear-cut position of the Office, which has excluded registration of these signs in a document aimed at explaining how substantial review of trade mark applications is to be carried out. [2]

2) Signs which consist of colours and holograms
The Office has made it clear that signs consisting of just one colour generally are devoid of sufficient distinctive character and cannot therefore be registered as trade marks. However, under very specific circumstances, such signs can be registered as trade marks if the colour is “absolutely unusual” in relation to the goods or services for which registration is sought. Such a sign is in fact sufficiently distinctive and can be registered.[3] 

The online Register of national trade marks which is run by the Office shows that there are currently no signs consisting of just one colour (or its tones/shades) which have been registered as Slovak trade marks.  In fact, so far, three applications for registration have been refused, [4] and three applications which have been submitted by telecommunications companies (O2 Holdings, Deutsche Telekom AG) in August 2009 and November 2009 [5] are currently under review by the Office.


02 Holdings


02 Holdings


Deutsche Telekom AG

 O2 Holdings  O2 Holdings  Deutsche Telekom AG

No applications for registrations of holograms have so far been submitted to the Office yet.

3) Three Dimensional Signs

According to the Slovak on-line database of registered trade marks, there are currently 312 validly registered three-dimensional trade marks.

Slovak national legislation on trade marks sets out which signs shall be refused to be registered by the Office.[6] These are signs which consist exclusively of the shape of the goods and which:

  • result from the nature of the goods (i.e., signs which are devoid of any special adjustments in the design of the shape of goods such as a watch-shape for a watch or a toothbrush-shape for a toothbrush),

  • are necessary to obtain a technical result (i.e., shapes which perform specific technical functions or depend on the technical characteristics of the goods), or

  • give substantial value to goods (i.e., the external shape of the goods which appeal directly to the consumer from an aesthetic point of view and are unrelated to the commercial value of the goods, such as the shape of a cigarette lighter allowing a better handgrip [7] ).

The wording of the Slovak Trade Mark Act provisions concerning absolute grounds for refusal of registration is akin to that of Council Regulation (EC) No. 40/94.[8] With particular regard to Articles 4 and 7 of the Council Regulation, these have been recently intepreted by the Court of Justice of the European Union (CJEU) in Lego v MEGA Brands, Inc,[9] a case concerning registration of a toy brick as a Community trade mark.

 Lego Brick

The interpretation of these provisions by the CJEU is similar to that already applied in the Slovak Republic, where protection under trade mark law is excluded for shapes which are necessary to obtain a technical result. [10]  Furthermore, the practice of the Office is that trade mark protection is refused in relation to numerous three-dimensional signs, on the basis that protection should be obtained under design law because of the potentially indefinite duration of trade mark protection.


[1]  Section 2 of the Act on Trademarks No. 506/2009 Coll., English version available at:; accessed on 13 April 2011.


 Procedure before the Office p. 19, Slovak version available at:, lastly accessed on 13 April 2011.
[3]Ibid., p. 20.
[4]Application No. 6233-2005 (Deutsche Telekom AG), Application No. 2924 – 2001 (Northern Technologies International Corporation – NTI), Application No. 1894-2006 (KWS Saat AG).
[5]Application No. 5854-2009 (O2 Holdings), Application No. 5853-2009 (O2 Holdings), Application No. 5600-2009 (Deutsche Telekom AG).
[6]Section 5 (1) e) of the Trade Mark Act No. 506/2009 Coll. n (1), Procedure before the Office n (2) p. 24.
[7]Decision of the Office dated 31.10.2003, file No. MOZ 689013, II/139-2003.
[8]Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trademark, OJ 1994 L 11, p. 11).
[9]Lego Juris A/S v Office for Harmonisation in the Internal Market (Trademarks and Designs) (OHIM) and MEGA Brands, Inc., published European Court reports 2010 Page 00000.
[10]Belicka I., ‘Three dimensional trademarks and examination of their registrability’ in Intellectual Property 1/2003 p. 47.



Radovan Repa

Associate, Bratislava
Czech Republic & Slovakia

Call me on: +421 232 332 800