New duties for trademark owners

A new amendment of the Act No. 441/2003 Coll., the Trademark Act (the „TMA“), implemented European Directive No. 2015/2436 from the 16th December 2015. The change has been effective since 1st January 2019 and could have a significant impact on owners of already registered trademarks.

Before the cited amendment, the Industrial Property Office (the „IPO“) examined, pursuant to section 6 of the TMA,  if the submitted trade mark was not identical or if it did not contain identical elements as a trade mark already registered for the same products and services. If the IPO ascertained a similar trade mark has already been registered, it was obliged to request the applicant to provide a written consent of the owner of the already registered trade mark, or to restrict the range of collisional products and services. When such requirement was not met, the IPO declined the registration.

Upon effects of the amendment, in the case of identical elements with previously registered trade mark, the IPO does not decline such submission. In case the submission  meets formal requirements, the IPO shall publish the newly applied trade mark in the IPO Bulletin. Provided that the owner of the already registered trade mark wants to prevent registration of the new trademark, it is obliged to file an objection and to pay an administrative fee in amount of CZK 1.000, within three months after such publishing. If the owner of the existing trade mark fails to do so, the IPO will register the new trade mark.

The owner of the previously registered trade mark may request that the registration of the new trademark is nulled, pursuant to section 32 of the TMA. In case the trade mark has been registered for more than 5 years, it can be additionally required to submit evidence of usage of the registered trade mark, which may further complicate its situation.

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