- PART I GENERAL PROVISIONSTrademark
- PART II PROCEDURE ON MATTERS CONCERNING A TRADEMARK
- Article 5 Trademark Application
- Article 6 Priority right
- Article 7 Modification of the application, assignment and transfer of the application
- Article 8 Examination and Publication of the Application
- Article 8a Observations
- Article 9 Oppositions against the Entry in the Register
- Article 10
- Article 11
- Article 12 Registration of a Trademark
- Article 13 Term of Protection
- Article 14 Modification of a Trademark and of List of Goods and Services
- Article 15 Termination of a Trademark
- Article 16 Invalidation and Revocation of a Trademark
- Article 17
- Article 18
- Article 18a Specific Provision Concerning Effects of Revocation
- Article 19
- Article 20 Specific Provision Concerning Collective Trademarks
- Article 21
- Article 23
- Article 22
- PART III RIGHTS AND OBLIGATIONS IN TRADEMARKS
- Article 24 Rights of Trademark Owners
- Article 25
- Article 26
- Article 26a
- Article 27 Limitations of Trademark Rights
- Article 26b
- Article 28 Obligations in Trademarks
- Article 29 Assignment and Transfer of Trademarks
- Article 30 License
- Article 31 Lien on a Trademark
- Article 32 Forfeiture of trademark and rectification of trademark owner
- Article 33 Specific Rights and Obligations in Collective Trademarks
- PART IV RELATIONS WITH FOREIGN COUNTRIES,INTERNATIONAL REGISTRATION OF TRADEMARKS
- PART V COMMON, TRANSITIONAL AND FINAL PROVISIONS
- Article 37 Common Provisions
- Article 38
- Article 39
- Article 40 Further processing
- Article 40a Restitutio in integrum
- Article 40b Grounds for the decision
- Article 41
- Article 42 Remedies
- Article 43
- Article 44 Provision of Authorisation
- Article 45 Transitional Provisions
- Article 46 Repealed Provisions
- Article 47 Effectiveness
Act No 55/1997 Coll. on Trademarks
Amended by: Act No 577/2001 Coll.
Act No 14/2004 Coll.
Act No 344/2004 Coll.
National Council of the Slovak Republic has adopted the following Act:
PART I
GENERAL PROVISIONS
Trademark
Article 1 A trademark is any sign capable of being represented graphically, consisting particularly of words, including personal names, letters, numerals, drawings, shape of goods or of their packaging, or their mutual combinations capable of distinguishing goods or services of one person from the goods and services of other person, registered in the Register of Trademarks (hereinafter referred to as "the Register"). A collective trademark is a sign referred to in Paragraph 1 thereof, if it is capable of distinguishing products or services, originated by members of a legal entity established for the purpose of protection of their interests or for other purposes (hereinafter referred to as "association i " from goods or services provided by other persons and which is registered in the Register.
Article 2 The following shall not be recognised as a trademark: sign which does not conform to the requirements of Article 1, sign which has no distinctive capacity, sign consisting exclusively of indications or elements that serve in the trade to designate the kind, quality, quantity, purpose, value, geographical origin or other characteristics of goods or services or, if appropriate, time of production of goods or of rendering of services, sign consisting exclusively of signs or indications which have become customary in current language or have been using in established practices of trade, sign consisting exclusively of the shapes of goods or of their packaging which results from the nature of goods themselves or is necessary to obtain a technical result, or gives substantial value to the goods, sign which is of such a nature as to deceive the public, particularly with regard to the nature, quality or geographical origin of the goods or services, sign which is contrary to public order or principles of morality, sign whose use would be contrary to the obligations of the Slovak Republic under international treaties, sign containing a sign of a high symbolic value, particularly a religious symbol, sign applied for wines or spirits containing a geographical indication identifying wines or spirits with respect to such wines or spirits not having that origin, which is the subject of the application which has not been filed in good faith. The signs referred to in paragraph 1 (b) to (d) may be accepted and registered in the Register if a natural person or a legal entity filing an application for registration (hereinafter referred to as "Applicant") proves that such sign has acquired distinctive character in relation to the goods or services for which registration is requested following the use which has been made of it on the territory of the Slovak Republic or in relation to this territory prior the date of filing of the application for the entry in the Register (hereinafter referred to as "Application").
Article 3
(1) The following shall not be recognised as the trademark: sign identical with the trademark with the earlier priority right which has been registered for another owner for identical goods or services, sign identical with applied sign of another applicant with the earlier priority right provided that such sign is registered for identical goods or services, sign identical with a trademark registered for identical or similar goods or services that has expired under Article 15 (1)(a) if the application was filed within two years after the expiration date of the trademark; this provision shall not apply if the application was filed by the person who at the time of the expiration of the trademark thereof has been registered as the owner of the trademark or its legal successor. Provisions of paragraph 1 shall not apply if the owner of the earlier trademark or applicant of the identical sign with the earlier priority right gives his written consent to the registration of later sign.
Article 3a
Identity and similarity of signs or trademarks and identity of goods or services
Signs or trademarks, which are identical or differ only in inessential elements, which do not change the character of the sign or trademark as a whole shall be deemed identical. Signs or trademarks and goods or services shall be deemed similar if because of this similarity there exists a likelihood of confusion of signs or trademarks or goods or services originating
Article 4
(1) The sign shall not be recognised as a trademark where the Industrial Property Office of the Slovak Republic (hereinafter referred to as "the Office"), on the grounds of oppositions filed pursuant to Article 9, ascertains that it is: identical with a trademark with the earlier priority right if the trademark has been registered for similar goods or services, or confusingly similar to a trademark if the trademark has been registered for identical or similar goods and services, identical with an applied sign with the earlier priority right provided that such sign is registered for similar goods or services, or confusingly similar to a trademark with the earlier priority right provided that such sign is registered for identical or similar goods or services, identical with or confusingly similar to a trademark with the earlier priority right which has acquired reputation in the Slovak Republic if the use of such sign for goods and services, which are not similar to those for which the earlier trademark has been registered, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark, identical with or confusingly similar to a sign which is registered as a trademark for identical or similar goods or services in the country or in relation to the country which is the member state of the international convention 1a) or is a member of the World Trade Organization 1b) (hereinafter referred to as "Foreign trademark”) provided that the applicant of this sign is an agent or a representative of the owner of the foreign trademark for the territory of the Slovak Republic on the basis of other relation 1c) (hereinafter referred to as "Representative”) and applies for registration thereof in his own name without the owner's consent, identical with or confusingly similar to an unregistered sign which in the course of trade prior to the filing date of the application has acquired distinctive character for identical or similar goods or services of its owner and where such sign is not of a mere local significance, identical with or confusingly similar to the trade name or its essential part, registered in the Register of Companies or a similar register for an entrepreneur who conducted an economic activity with identical or similar goods or services prior to the filing date of the application, identical with or confusingly similar to the forename and surname or an assumed name or a portrait of a person if the entry of this sign in the Register could interfere with the rights to individual’s protection, identical with or confusingly similar to the subject matter of other industrial property right with the earlier priority right, identical with or confusingly similar to an author's work created prior to filing date of the application where by using such sign the author's copyright could be affected. The sign shall not be recognised as a trademark where Office on the grounds of oppositions filed pursuant to Article 9, ascertains that it is: identical with or confusingly similar to a sign which, before filing date of the application, had become well-known, following its use in the Slovak Republic or in relation to the territory of the Slovak Republic according to the international treaty ii , for goods or services of its owner (hereinafter referred to as "Unregistered well-known mark"), if this sign is applied for identical or similar goods or services, identical with or confusingly similar to an unregistered well-known mark, if the use of such sign for any goods or services would indicate connection between the thus-marked goods or services and the owner of the unregistered well-known mark, and if the interests of its owner are likely to be damaged by such use. The sign shall furthermore not be recognised as a trademark where the Office, on the basis of oppositions filed pursuant to Article 9, ascertains that it is identical with or confusingly similar to an earlier Community trademark 2a), which has a reputation in the Community, if the use of such sign for goods or services, which, however, are not similar to those for which the earlier Community trademark with a reputation has been registered, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trademark. RT II OCEDURE ON MATTERS CONCERNING A TRADEMARK icle 5 demark Application (1) The trademark application shall be filed by applicant at the Office.
(2) An application shall contain:
a) a request for the entry of the sign as a trademark in the Register, name, surname and domicile if the applicant is a natural person, and name or trade name and seat if the applicant is a legal entity, wording or graphical presentation of the sign; in case of a three-dimensional sign its surface presentation, list of the goods or services in respect of which the registration is requested. ) Goods or services included in the list under paragraph 2 (c) shall be classified in accordance with the international treaty. iii ) The application can be filed for one sign only. ticle 6 iority right For the purpose of starting the proceedings and the rise of priority right the filing date of the application shall be deemed the date of delivery of the submission or the date of elimination of deficiencies of submission, which contains at least: ata indicating the express intention of the applicant to file a trademark application, ata enabling identification of the applicant and correspondence with the applicant, c) requirements in accordance with Article 5 (2)(b) and (c) except the classification referred to in Article 5 (3).
(2) The applicant shall enjoy the priority right against any person who subsequently files an application containing identical or confusingly similar sign for identical or similar goods or services
a) on the filing date of the application according to paragraph 1 or n the date of priority right pursuant to international convention 1a) following from the earlier trademark application. The applicant must claim the priority right according to paragraph 2(b) in the application and prove this right within the period of three months as from the date of filing of application; otherwise the right of priority shall not be recognised. The priority right according to paragraph 2(b) shall be applied to one application only, provided that this application is filed in the state which is the member state of the international convention1a) or is a member of the World Trade Organization1b) ; otherwise this right may be claimed only if the condition of reciprocity is fulfilled. The priority right pursuant to paragraph 2(b) applies also to services. Article 7
Modification of the application, assignment and transfer of the application
(1) Upon the request of the applicant the Office shall permit modification of the application where it concerns the forename, surname or name, or the trade name, seat, domicile and business address if a change occurred after filing of the application and the modification of the application for registration reconciles data adduced therein with reality without affecting the general nature of the trademark. No other changes in the application after its filing shall be permitted. If a filed sign is modified after publishing of the application, the application shall be published again with modified sign. After filing of the application the applicant may reduce the list of goods or services for which the trademark is to be registered; such reduction cannot be withdrawn. No extension of the list of goods or services for which the trademark is to be registered after filing of application is permitted. Prior to the entry of the trademark in the Register the applicant is entitled to divide the application containing more than one kind of goods or services to separate applications. The priority right and the date of filing of application of the original application shall be maintained By written agreement the applicant may assign his right arising from the application for the goods or services which are listed in the application, or for part of them, to another natural person or legal entity if these goods or services constitute the subject of his economic activity as of the date of the agreement. Rights following from application shall be transferred to another person in cases stated by special Act iv . Article 8
Examination and Publication of the Application
(1) The Office shall conduct an examination whether the application complies with the conditions laid down by this Act and its implementing regulation. 4a)
(3) If the applied sign does not satisfy with conditions according to Articles 1 to 3, the Office shall refuse the application. Before taking this decision the Office shall require from the applicant the statement concerning the reasons on the basis of which the application is to be refused.
(4) If the reasons on the basis of which the application is to be refused according to paragraph 3 concern only the part of goods or services, the Office shall refuse the application only for this part of goods or services.
(5) If the proceeding on application was not suspended according to paragraph 2 or if the application was not refused according to paragraph 3, the Office shall publish the application in the Official Journal of the Industrial Property Office of the Slovak Republic (hereinafter referred to as "Journal").
Article 8a
Observations
(1) Before the entry of the trademark in the Register, any person may submit observations in the written form to the Office on the grounds of fulfilling the conditions of Article 2 and 3; the Office shall take into account the observations in proceedings leading to the decision on the entry of the trademark in the Register. The person who submitted the observations will not become a party to the proceedings.
The Office shall communicate the observations to the applicant who may comment them within prescribed period of time. The Office shall inform both the applicant and the person who submitted the observations about the results of the assessment of observations. ositions against the Entry in the Register icle 9 er publishing the application in the Journal, a person, affected due to reasons stated in Article 4 (hereinafter referred to as “Opponent”), may file oppositions against the entry of the sign in the Register within the period of three months from this publication at the Office. The oppositions shall contain legal and factual justification as well the documentary evidence or indication of documentary or other evidence, which shall be submitted by the opponent. Article 10
(1) The Office shall examine whether the oppositions have been filed duly and in time according to Article 9 and whether the conditions of obligatory representation according to Article 34 (3) is satisfied. If the oppositions have not been filed duly and in time according to Article 9 or if the opponent does not submit the indicated evidence upon the invitation of the Office within prescribed time period or does not prove the satisfaction of the condition of obligatory representation according to Article 34 (3) upon the invitation of the Office within prescribed time period, the Office shall suspend the opposition proceedings. The Office shall advise the applicant of the oppositions filed pursuant to Article 9, proceedings on which were not suspended, and invites him to make a statement related to the oppositions within the prescribed time period. ) If the applicant fails to make a statement regarding the oppositions within the prescribed time period according to paragraph 3 or fails to satisfy the condition of obligatory representation according to Article 34 (3) upon the invitation of the Office within prescribed time period, the Office shall suspend the application proceedings to the extent of the oppositions filed. The applicant must be, however, warned about this in the invitation to make a statement. ) The Office shall deliver a written text of the decision according to paragraph 2 to the opponent and a written text of the decision according to paragraph 4 to both the opponent and the applicant. The Office shall suspend the opposition proceedings, if the reason for which the opposition has been filed vanished. The Office shall deliver both to the applicant and the opponent the decision on suspension of the opposition proceedings. Article 11
(1) The Office shall examine, on the basis of the oppositions with regard to which the applicant made a statement, whether an applied sign satisfies the conditions for registration with respect to Article 4.
(2) If the Office in the proceedings according to the paragraph 1 on the basis of evidence evaluated on the proposal of the parties scertains that the applied sign does not satisfy requirements for registration with respect to Article 4, it shall refuse the application or oes not ascertain the existence of the grounds with respect to Article 4 or ascertains that the opponent is not a person affected according to Article 9, it shall refuse the oppositions. If the reasons for refusal of the application according to paragraph 2 (a) concern only some of the goods or services, the Office shall refuse the application in respect of those goods or services. The Office shall deliver a written text of the decision according to paragraph 2 to both the applicant and the opponent.
Article 12
Registration of a Trademark If the requirements laid down for registration of a sing as a trademark in the Register by this Act, are satisfied, the Office shall enter the trademark in the Register. By entering the trademark in the Register the applicant acquires the trademark rights and becomes the owner of the trademark and the Office shall issue a certificate of registration to the owner. (3) The Office shall publish the registration of the trademark in the Journal.
(4) Legal or natural person entered as the owner in the Register shall be deemed the owner of the trademark. icle 13 Term of Protection
(1) The term of protection for a registered trademark is ten years as from filing date of the application with the Office (Article 6 (1)).
(2) At the request of the trademark owner for renewal of a registration submitted at the earliest during the final year of the term of protection and at the latest within six months after its expiry (hereinafter referred to as "Request for registration renewal") the term of protection of the trademark shall be repeatedly extended for additional ten years.
Article 14 ification of a Trademark and of List of Goods and Services ) At the request of the trademark owner the Office shall permit modification of the trademark where it concerns the forename, surname or name, or trade name or seat, domicile, trade establishment if this change occurred after the entry of the trademark in the Register and if this modification reconciles data adduced therein with reality without affecting the general nature of the trademark. ) Upon the request of the trademark owner the Office shall reduce the list of goods or services for which the trademark is registered; such reduction cannot be withdrawn. No extension of the list of goods or services for which the trademark is registered is permitted icle 15 mination of a Trademark
(1) A trademark is terminated:
a) on the expiry of the term of protection, unless an request for registration renewal was filed in due time, n the day of the declaration of renunciation to the right made by the owner of the trademark presented to the Office, this statement has no legal effects if rights of a third party hinder the declaration of renunciation. n the effectiveness of the revocation of the trademark according to Article 16 (3) to (13), Article 17 and Article 23. A trademark which is the subject to the rights of third party will cease to exist pursuant to paragraph 1 (b) on the day when the trademark owner provides proof of termination of these rights or, the approval of the authorised persons with the termination of the trademark. The Office enters the termination of a trademark in the Register. alidation and Revocation of a Trademark icle 16 ) The Office shall declare the registration of a trademark invalid if it ascertains in the proceedings started at the request of a third party or ex-officio that the trademark was registered contrary to the conditions laid down by this Act for registration of trademarks. ) The declaration of trademark registration invalid pursuant to paragraph 1 shall not proceed if the trademark has been registered contrary to Article 2 (1) (b) to (d) but its owner proves that such trademark has acquired distinctive character in relation to the goods or services for which it was registered following the use which has been made of it on the territory of the Slovak Republic or in relation to this territory prior the start of the invalidation proceedings. The Office shall revoke the registration of a trademark if in the proceedings started at the request of a third party or ex officio it ascertains that the trademark in consequence of use of it by its owner or with his consent is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services for which it is registered. The Office shall revoke the registration of a trademark if in the proceedings started at the request of a third party it ascertains that the trademark has not been used in the Slovak Republic for at least five consecutive years preceding the start of revocation proceedings and the trademark owner has not given proper reasons for non-use. Trademark is deemed not to be used during five consecutive years on the territory of the Slovak Republic unless proved otherwise. Trademark shall not be revoked if the owner started to use it in good faith after the expiry of five consecutive years; starting to use the trademark in good faith within the time limit of three months preceding the filing of the request for revocation shall not be deemed starting to use the trademark in good faith, unless proved otherwise. he Office shall revoke the registration of identical trademark if, during the proceedings started at the request of the owner of the trademark with the earlier priority right, it ascertains that the contested trademark has been registered for similar goods or services, or, the Office shall revoke the registration of confusingly similar trademark if, during the proceedings started at the request of the owner of the trademark with the earlier priority right, it ascertains that the contested trademark has been registered for identical or similar goods or services. he Office shall revoke the registration of a trademark if, in the proceedings started at the request of the owner of trademark with the earlier priority right, which has acquired a reputation in the Slovak Republic, it ascertains that the use of the contested trademark for goods or services, which are not similar to those for which the earlier trademark has been registered, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. he Office shall revoke the registration of a trademark if in the proceedings started at the request of the owner of a unregistered or registered well-known mark it ascertains that the contested trademark is entical or confusingly similar to unregistered well known mark which, before filing date of the application of the contested trademark, had become well-known (Article 4 (2)(a)) for identical or similar goods or services or entical with, or confusingly similar to, an unregistered well known mark which, before filing date of the application of the contested trademark, had become well-known (Article 4 (2)(b)) if the use of such trademark for any goods or services would indicate connection between the thus-marked goods or services and the owner of the unregistered well-known mark, and if the interests of its owner are likely to be damaged by such use. he Office, on the basis of the proposal of the user of an unregistered sign, shall revoke the registration of trademark identical with or confusingly similar to the unregistered sign which in the course of trade prior to the filing date of the contested trademark application has acquired distinctive character for identical or similar goods or services, if such sign is not of a mere local significance. he Office shall revoke the registration of a trademark if in the proceedings started at the request of a third party it ascertains that the trademark, as a result of use or failure to use by its 0) The Office shall revoke the registration of a identical or confusingly similar trademark if in the proceedings started at the request of an entrepreneur ascertains that the trademark is identical with or confusingly similar to the trade name or its essential part, registered in the Register of Companies or a similar register for such entrepreneur if he conducted an economic activity with identical or similar goods or services prior to the filing date of the application of contested trademark. 1) The Office shall revoke the registration of a identical or confusingly similar trademark if in the proceedings started at the request of third party ascertains that the trademark is identical with or confusingly similar to the forename and surname or an assumed name or a portrait of a person use of this sign in the Register could interfere with the rights to individual’s protection. (12) The Office shall revoke the registration of an identical or confusingly similar trademark if in the proceedings started at the request of the owner of another industrial property right ascertains that the contested trademark is identical with or confusingly similar to the subject matter of other industrial property right with the earlier priority right.
(13) The Office shall revoke the registration of a identical or confusingly similar trademark if in the proceedings started at the request of third party ascertains that the trademark is identical with or confusingly similar to an author's work created prior to filing date of the application of contested trademark if by using such sign the author's copyright could be affected.
(14) If the reasons for revocation of the registration of a trademark refer solely to one part of the goods or services for which the trademark has been registered, the Office shall revoke the registration of a trademark only for those goods or services. ) File a request for invalidation of registration of a trademark pursuant to paragraphs 1 may also be affected after the termination of the trademark pursuant to Article 15 (1)(a) to (c) if the claimant proves legal interest. 6) The Office shall not revoke the registration according to paragraphs 5 to 8 if the owner of the right: has acquiesced for a period of five consecutive years the use of contested trademark on the territory of the Slovak Republic since the moment he was aware of such use; it shall not apply if the owner of the right proves that the application of contested trademark was applied for in bad faith or has not used the trademark registered or unregistered well-known mark or unregistered sign on the territory of the Slovak Republic for five consecutive years and has not given proper reasons for such non-use. ) The Office shall revoke the registration of a trademark if, in the proceedings started at the request of the owner of the Community trademark2a), it ascertains that the contested trademark is identical with, or confusingly similar to, an earlier Community trademark and has been registered for goods or services which are not similar to those for which the earlier Community trademark is registered, where the earlier Community trademark has a reputation in the Community and where the use of such trademark without due cause would take unfair Article 17
(1) The Office shall revoke registration of a trademark on the grounds of the court decision according to which the trademark
a) containing the forename and surname or a portrait of a natural person, or his assumed name, violates the rights to individual’s protection,
b) containing the name or trade name of a natural person or a legal entity, registered in the Register of Companies or a similar register prior to filing of the application, interferes with its reputation,
c) interferes with the earlier copyright.
(2) The Office shall revoke the registration of an identical or a confusingly similar trademark on the basis of a court decision according to which the use of such trademark is prohibited as an act of unfair competition1d).
icle 18 In case of invalidation of registration of a trademark pursuant to Article 16 (1) the registration of this trademark in the Register shall be deemed to have never occurred; otherwise the revocation shall be effective from the date of starting the revocation proceedings. ticle 18a Specific Provision Concerning Effects of Revocation
(1) Effects of the trademark revocation shall not concern:
a) any decision on infringement of trademark right which had become effective and had been implemented prior to the entry into effect of the revocation decision,
b) any contract concluded prior to the entry into effect of the revocation decision, in so far as it had been performed before the entry into effect of that decision; however, repayment to an extent justified by the contract may be claimed.
(2) If the application does not satisfy the conditions according to Article 5(2) to (4), as well as specified by the implementing regulation, the Office shall invite the applicant to eliminate the deficiencies within a prescribed period of time. If the applicant fails to eliminate those deficiencies within the prescribed period of time, the Office shall suspend the procedure. The notice asking to eliminate the deficiencies must advise the applicant in advance about this.
(3) The revocation shall be proceeded at the request of an authorised person within six months from the date when the court decision becomes valid.