Trade mark law in the Czech Republic

21 June 2010

Andrea Jarolímková, Vojtech Chloupek

The legal protection of trade marks in the Czech Republic is governed by two pieces of legislation – Act No. 441/2003 Coll., on Trade Marks ("Trade Marks Act") and Act No. 221/2006 Coll., on the Enforcement of Industrial Property Rights ("IP Enforcement Act"). Both of these acts implement the relevant European Community law.[1]

Czech trade mark law protects primarily those trade marks that are registered (i) by the Czech Industrial Property Office ("Czech IP Office") as national trade marks; (ii) by the Office of Harmonisation for the Internal Market (OHIM) as Community Trademarks; and (iii) by the World Intellectual Property Organization (WIPO) as international trade marks with designation for the Czech Republic. Although unregistered trade marks can also receive protection under Czech law if they can be considered "well-known marks" pursuant to Article 6bis of the Paris Convention, such protection is considerably weaker and less certain than that afforded to registered trade marks.

The national trade mark registration proceedings in the Czech Republic are administered by the Czech IP Office which, following the receipt of an application, examines whether the application meets formal requirements and then carries out a substantive examination to assess whether the application also meets the criteria for registration. In particular, the Czech IP Office considers whether there are any absolute or relative grounds for refusal of the application. If the Czech IP Office believes that all requirements are met, it will publish the application in its Bulletin and the trade mark application is open to oppositions by third parties for a period of three months from the publication. Following the lapse of this period and in the absence of any pending opposition proceedings, the trade mark becomes registered in the Czech Trade Marks Register and the trade mark owner may fully benefit from the rights arising under the Czech trade mark law.

Czech national trade marks are registered for a period of ten years from the date of filing and may be renewed upon the request of the trade mark owner for additional periods of ten years without limitation. The basic registration fee including registration for up to three classes of products and services is CZK 5,000 (approx. USD 265). Any additional class of products and services requires additional fee of CZK 500 (approx. USD 27).

As regards the length of proceedings, the Czech IP Office has been successful in shortening and optimising the registration proceedings in recent years. The registration proceedings (from filing until the publication of the trade mark application) now take four months on average. The average length of the whole trade mark registration proceedings is less than nine months, including any opposition proceedings.

Currently, there are around 790,000 trade marks valid in the territory of the Czech Republic of which Community Trade Marks represent around 70%. In 2009, the Czech IP Office received 7,892 national trade mark applications, the vast majority (almost 92%) of which were received from local entities.

The adoption of the IP Enforcement Act in 2006 was very important for the protection and enforcement of intellectual property rights in general. It not only unified and listed all claims that an owner of any registered intellectual property rights (including trade marks) may have against infringers, but it also introduced an element of specialised IP decision making in the Czech Republic by appointing, with effect from 1 January 2008, the Municipal Court in Prague to be the only first instance court in the country to hear all claims arising from registered intellectual property rights and competent to review any administrative decisions issued by the Czech IP Office. In addition, this court is the designated Community Trade Mark court as well as the designated Community Design court in the Czech Republic.

In trade mark infringement disputes in the Czech Republic, it is very common that a trade mark claim is joined by a claim arising from infringement of a business name or unfair competition behaviour. To date high profile trade mark cases are rather scarce and so Czech case law does not provide much guidance on particular substantive trade mark law issues. Czech courts usually consider what approach must be taken in analysing distinctiveness of a trade mark or likelihood of confusion. There have also been a number of decisions concerning the notion of an average consumer. Nevertheless, it is possible to say that Czech courts are fairly predictable when it comes to trade mark disputes which is partly due to the general obligation of Czech courts to conform the interpretation of Czech law to the European Community law and hence follow the case law of the European Court of Justice.





 [7] Trade Mark Directive No. 89/104/EEC, Community Trade Mark Regulation (EC) No. 40/94 and Enforcement Directive No. 2004/48/EC.

 

Authors

Chloupek-Vojtech

Vojtech Chloupek

Partner
Czech Republic & Slovakia

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