As of April 1st 2004 a new Trademark Act – No..441/2003 – shall come into force. Although the structure of the Act has been considerably amended, there are hardly any revolutionary substantive changes in the law. Completely new are provisions concerning Community Trademarks, which will be automatically extended to the Czech Republic with the date of its accession to the European Union (these provisions will come into force as of May 1st 2004). The most important amendments at a glance: The definition of trademarks (Art.1) has been slightly amended, now including expressively also the possibility of colour trademarks.
Art.2 now regulates, which trademarks are able to claim protection in the Czech Republic, newly including CTMs and well-known trademarks according to Art.6bis Paris Convention. Community Trademarks with seniority may also claim older rights (Art.3). Grounds for refusal ex officio (Art.4) as well as grounds for opposition (Art.7) and nullity (Art.32) newly include applications, which were filed in bad faith.
The provisions concerning oppositions and nullity (Art.7 and 32) based on known trademarks have been reformulated and expanded;the respective motions can now be based not only on "well-known " trademarks,but also on trademarks with a reputation.
Rights resulting from the trademark (Art.8) are specified more precisely, in particular the kind of signs and goods or services, which may not be used without the consent of the trademark owner and the kind of use, which shall be considered as trademark infringement. Newly included is the claim on prohibition of use of an agent’s trademark (Art.6septies Paris Convention).
The provision on exhaustion of rights (Art. 11) has been amended in order to include the market of the whole European Union (instead of the Czech Republic only).
A new general provision, Art.12, implies a forfeiture of rights in cancellation or infringement proceedings, if the use of the contested trademark has been knowingly acquiesced to for 5 years, provided the trademark application has not been filed in bad faith. However, even if the owner of an older trademark forfeited his rights, the owner of the younger trademark cannot claim rights against the older trademark.
The consequences of non-use of a trademark are specified in Art.13 and 14. An important amendment concerns the obligation to prove use of an older cited trademark in nullity proceedings (i.e.the owner of the attacked trademark might object that the older trademark has not been used; the owner of the older trademark would then have to prove use within the same proceeding).
The provision on agent ’s trademarks has been slightly amended, in particular applying the term "agent" (Art.6septies Paris Convention) rather than the hitherto used definitions using the terminology of the Czech Commercial Code.
The provision on licenses (Art.18) has been completed with a specification of the requirements and details for claiming trademark rights against a licensee and with aprovision, which allows the exclusive licensee to start infringement proceedings on his own and without consent of the trademark owner under certain circumstances.
Provisions concerning the application and registration procedure remain more or less unchanged. Worth mentioning are the following amendments:
Priority may be claimed from an application in a member state of the Paris Convention, the World Commercial Organization or in another state under the principle of reciprocity (Art. 20).
Newly introduced is the possibility of an irrevocable disclaimer for non-distinctive elements of a trademark (Art.22).
A further new provision concerns the possibility of "remarks" regarding the registrability of a trademark in respect of grounds for refusal ex officio (Art.24).
A supplementary provision concerning opposition proceedings (Art.26) allows the Patent Office to invite the parties to try and settle the matter by an agreement (similar to the "cooling-down-period " at OHIM).
New is the distinction between "cancellation" with effects ex nunc, Art.31 (i.e. non-use during a period of 5 years, which is no more dependant on the date of filing of the request; loss of distinctiveness or subsequent acquiring of deceiving character;due to a court decision on unfair competition)and "nullity " with effects ex tunc, Art.32 (i.e. on request, which may be filed in accordance with all grounds for opposition).
Art.33 newly limits the effects of cancellation or nullity as far as decisions in infringement proceedings and agreements,which have been concluded before the decision on cancellation or nullity came into legal force, are concerned.
As for the formal provisions it is worth pointing out that the provisions concerning deadlines, in particular non-extendable, non-excusable deadlines and terms for paying official fees as well as the effects of non-payment within the term have been sharpened considerably. An additional term has been introduced for substantiating an appeal – the term for filing the appeal of one month from delivery of the decision remains, whereas there is a new term for establishing the grounds of appeal, i.e. within one month from the date of filing the appeal (Art.42). The general deadline for claiming the restitution of a term has been extended to 2 months (so far 15 days), Art.43.
Provisions concerning the Register and Bulletin have been supplemented; new is the obligation of the Patent Office to register changes resulting from final decisions without delay, as well as a provision regarding the electronic register (Art.44).
Newly introduced is a whole section on Community Trademarks. In particular, there is the possibility to file a CTM application through the Czech Patent Office (Art.49), the possibility of a conversion of the CTM into national trademarks according to the EU Regulation (Art.50), and the right of owners of older national trademarks,which were filed in good faith,to claim prohibition of use of an identical or confusingly similar CTM in the territory of the Czech Republic after the date of the accession to the EU (Art.51).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
