The Directive was implemented into Czech national trade mark law (i.e. Act No. 411/2003 Coll. on trade marks, the "CZ Trademark Act") on 1 January 2019.
The requirement for graphical representation of trade marks will be removed. The amended CZ Trademark Act should allow the filing of an application consisting of audio or video files, providing that the representation of the mark "enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor". The new definition of the trade mark is in accordance with paragraph 13 of the preamble of the Directive.
The amended CZ Trademark Act will introduce new relative ground for refusal or invalidity of a trade mark if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for, or registered, are identical with the goods or services for which the earlier trade mark is registered. Previously, it was the Czech IP Office's responsibility to refuse applications for identical marks or marks including identical elements. The new regime will therefore require trade mark proprietors to be more proactive in monitoring new applications and to file oppositions in order to prevent registration of such trade marks, rather than rely on the IP Office stopping such applications during initial review.
New certification marks will become available under the amended CZ Trademark Act. A certification trade mark is one that indicates that the goods or services, to which it is attached, comply with certain standards or have certain characteristics. The application and examination process is conducted in the usual manner, except where the application is filed by someone who is not, themselves, certified to carry on business involving supply of the relevant goods or services; in that case, they must file a copy of the rules governing the use of the mark with the competent authority within 2 months from the filing of the application.
Goods in transit: Trade mark owners will have an option to prevent all third parties from bringing goods, in course of trade, into the Member State where the trade mark is registered, where such goods come from outside the EU and are infringing the rights of the proprietor of the relevant trade mark. These provisions will strengthen trade mark protection, as the proprietor will be able to react to potential infringement prior to the goods or services being released for free circulation into the market.
The right to prohibit preparatory acts: The amended CZ Trademark Act will allow proprietors of registered trade marks to prohibit the affixing of an infringing mark to goods, and certain preparatory acts carried out prior to such affixing.
Written by Vojtech Chloupek