On 28 October 2009 the Slovak Parliament adopted the Act No. 506/2009 Coll. on Trademarks (“New Act”). The New Act came into effect on 1 January 2010 and replaced the Act No. 55/1997 Coll. on Trademarks (“Old Act”). Although the Old Act complied with Community law, the New Act was necessary in order to implement the relevant EC Directives more precisely. In comparison to the Old Act, the New Act uses better terminology and has a clearer structure.
Below we address the most important changes that the New Act has introduced.
Exhaustion of the rights conferred by a trade mark
The Old Act did not define exhaustion of trade mark rights. The New Act brings the definition in compliance with the relevant EC Directive. According to the definition, the trade mark owner may not prohibit, without legitimate reasons, the use of his trade mark on goods that are put on the Community market under the trade mark by the owner or with his consent.
Changes to registration of trade mark assignments and licence agreements
The New Act allows not only a new trade mark owner but also the previous trade mark owner to register a trade mark assignment with the Slovak Industrial Property Office (“IPO”). Moreover, the Act introduced a similar change in relation to registering a licence agreement. In addition to the licensor, a licensee can also register a licence agreement with the IPO. The aim of these changes was to allow both parties to the assignment or licence agreement to request its registration.
The Old Act required submitting the original or certified copy of a licence agreement when applying for its registration. As the licence agreement is often subject to trade secrecy, the New Act removed this requirement. It is sufficient to submit a declaration in which the licensor and the licensee confirm that the licence agreement was executed.
Trade mark renewal
To protect the position of a trade mark mortgagor, the New Act entitles the mortgagor, in addition to the trade mark owner, to request a trade mark renewal.
Trade mark opposition criteria more rigorous
The New Act stipulates more rigorous trade mark opposition criteria. The Old Act only required, when opposing the registration of a sign as a trade mark, to indicate what evidence would be served within three months after publishing the trade mark registration application in the Official Journal. It was possible to submit the evidence later during the opposition proceedings. The New Act requires submitting the relevant evidence within three months after publication of the application for registration. Evidence submitted after this time will be disregarded.