Slovakia has implemented the changes brought about by the Directive into the national trade mark act with the effectiveness as of 14 January 2019. In line with the Directive, some of the changes (in particular the change to revocation or declaration of invalidity under Article 45 Directive) are intended to be implemented later on (plan is the year 2020). The new amendment to Slovak trade mark act aims to harmonize the Slovak trade mark regulation with uniform rules within the EU internal market. The amended version of the new Slovak trade mark law can be accessed here (in Slovak language).
The requirement of graphical representation of trade marks will be removed. This means that the trade mark will no longer have to be graphically represented in order to be registered. Non-graphically available trade marks will be eligible for registration as far as they can be represented in the TM Register in an appropriate "manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor" (similar to requirements laid down in the Sieckmann case C-273/00). This will enable various new types of trade marks to be registered, such as sounds, holograms, etc.
New absolute grounds of refusal to register trade marks will be stipulated with regards to plant varieties. Under the new amendment to the Slovak TMA, the IPO will not be able to register trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law.
Under the new law, the IPO will have to examine only the absolute grounds for refusal. This means that the relative grounds (e.g. where the trade mark is identical with, or similar to, an earlier trade mark) will be dealt with only upon opposition. This new regime will therefore require trade mark proprietors to be more proactive.
One of the important changes to the Slovak TMA will also be the new principle that protection of trade marks lies only with those who actually use their trade marks. Also, those who use a trade mark to identify or refer to goods or services in a descriptive manner have a defence to any claim of infringement.
Upon the infringer's request, the proprietor of a trade mark will have to prove that during the 5-year period preceding the date of bringing the action, the trade mark has been genuinely used, or that there were proper reasons for non-use. Should the proprietor fail to prove this, he will not succeed in seeking protection for his trade mark.
The new Slovak TMA will reflect the Directive (and the Philips/Nokia case C-446/09) by means of stipulating that goods in transit will be subject to national trade marks.
In practice, the trade mark owner will be able to take action even against infringing goods that are only being shipped through Slovakia, i.e. prior to the moment when goods are being released for free circulation at their shipping destination.
Written by Vojtech Chloupek