The long-awaited comprehensive amendment of the Czech Trademarks Act has just been published and implemented in the Czech legal system as Act No. 286/2018 Coll. (the “Amendment”). The Amendment brings the Czech law in line with the relevant EU legislation and will come into force on 1st January 2019. We bring you a brief overview of the substantial changes introduced by the Amendment:
- The process of trademark registration will be significantly simplified; the Czech Intellectual Property Office (“Office”) will no longer examine possible conflicts with older trademarks when reviewing new applications; hence the owners of trademarks will be forced to do their own due diligence and actively protect their rights by challenging potential conflicting applications;
- The Amendment introduces many other changes that give a lot more responsibility to the owners of trademarks registered in the Czech Republic, while reducing the scope of control of the Office; for instance, the Office will no longer be entitled to initiate proceedings to challenge the validity of a trademark ex offo. It will be also easier to file speculative applications, as the Office won’t be entitled to outright refuse applications filed in bad faith;
- The trademark owners will be forced to take even greater care of their trademarks, in particular to use them in full scope and keep evidence of such use; when enforcing trademark rights, owners may be forced to prove due usage of their older trademark in order for their claim to be successful (whether in court proceedings or when filing objections or invalidity applications against conflicting trademarks);
- The Amendment introduces several new types of trademarks, which were not previously registrable, such as acoustic, kinetic or multimedia trademarks. The common characteristic of these new types of trademarks is that they need not be expressed in graphic form. This brings the Czech trademark law into the new digital age;
- The Amendment introduces several other changes, including some welcome clarifications of many provisions of the Trademark Act and more precise rules for various trademark proceedings handled by the Office.
Should you have any questions concerning the Amendment (or any trademark issues in general), please do not hesitate to contact us. We will be happy to help you with registration of your trademark in the Czech Republic, as well as with protection of your trademark rights.
JUDr. Tadeáš Petr, attorney at law – petr@plegal.cz
18. 12. 2018