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  • Amended Trademark Law takes effect as of January 2019

    13. 02. 2019

    As of January 1, 2019, the amendment to Act No. 441/2003 Coll., on trademarks, has come into force. The amendment transposes the Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States relating to trademarks. The Directive modernizes and improves the trademark systems of the EU member States in a significant manner, by both expanding on the types of trademarks to be registered (which means broader protection of trademark proprietor rights) as well as by amending the manner in which previously registered trademarks are protected.

    An important change concerns the protection of already registered trademarks. In their previous practice, the Industrial Property Office (IPO) reviewed each trademark application vis a vis trademarks already registered, and if the mark applied for was found to be identical with an earlier trademark registered by another proprietor or applicant for identical products or services, such a mark has not been registered as a trade mark by the IPO. However, since January 2019, registrations are being reviewed by the IPO only in terms of their fulfillment of objective criteria set forth by the law, i.e. the possible sameness of the mark to be registered with a trademark registered earlier is not examined. Thus, it is entirely up to the proprietor of the already registered trademark whether or not they will file their objections against the registration of another identical mark or a mark capable of being confused as a new trademark within the statutory three-month period (calculated from the publication of the trademark applied for in the Official Journal). If no such objections are raised, the newly submitted mark will be registered as a trademark.

    In order to eliminate the risk of registering an identical mark or a mark capable of being confused as a trademark to another proprietor, it will be necessary for the proprietor himself to perform the agenda hitherto carried out by the IPO, i.e. to continuously monitor whether a trade mark submitted for registration and published in the IPO Official Journal is not identical or capable of being confused with their already registered trademarks and, if such a conflict arises, to file an objection against the registration in a timely fashion, i.e. within the period referred to above.

    Another important novelty is the enlargement of the range of trademarks that can be registered by the IPO. In this respect, the amendment responds in particular to new technologies and anticipates their further development. Thus, it is possible to register not only pictorial and verbal representations, but also characteristic placement of trademarks on products, and sound, holographic and multimedia trademarks, but also, for example, typical gestures (e.g. hand waving, finger movement, etc.).

    On the one hand, the amendment provides the applicants with new possibilities of protecting their original marks, but on the other hand, it also gives the proprietors of the registered trademarks, in the event that they are unwilling to accept that a mark identical with their trademark can legally be used by another person, the obligation of continuous control of the newly submitted trademarks.

    We continue to be at your disposal, should you require more information on the impact of the aforementioned amendment to Act No. 441/2003 Coll. on the rights of trademark proprietors, or on the new possibilities of trademark protection.

    Author: Mgr. Jakub Hron

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