- (No. 137 of June 21, 1995)
- Part IGeneral Provisions
- Part IITrademark Application Procedure
- Trademark Application
- Examination and Publication of the Application
- Objections to Registration of a Trademark
- Objection Procedure
- Registration of the Trademark
- Part IIIRights in the Trademark
- Part IVModification of the Trademark, Term of Protection andLapse of the Trademark
- Part VSpecial Provisions on Collective Trademarks
- Part VIRelations With Foreign Countries
- Part VIICommon Provisions on Procedure Before the Office
- Part VIIICommon, Transitional and Final Provisions
Law on Trademarks (No. 137 of June 21, 1995)
TABLE OF CONTENTS
Articles
Part I: General Provisions........................................................ 1 - 3 Part II: Trademark Application Procedure Trademark Application................................................. 4 - 7 Examination and Publication of the Application........... 8 Objections to Registration of a Trademark................... 9 Objection Procedure...................................................... 10 - 11 Registration of the Trademark....................................... 12 Part III: Rights in the Trademark [Without title]................................................................ 13 - 15 Restriction of the Rights in the Trademark................... 16 Exhaustion of Rights..................................................... 17 Licenses........................................................................ 18 Assignment and Transfer of the Trademark.................. 19 Assignment to the Trademark Owner........................... 20 Right to Use as Guarantee............................................. 21 Part IV: Modification of the Trademark, Term of Protection and Lapse of the Trademark Modification of the Trademark..................................... 22 Term of Protection........................................................ 23 Lapse of the Trademark................................................ 24 Cancellation of the Trademark...................................... 25 - 26 Part V: Special Provisions on Collective Trademarks............... 27 - 34 Part VI: Relations With Foreign Countries................................. 35 - 37 Part VII: Common Provisions on Procedure Before the Office [Without title]................................................................ 38 - 39 Register and Gazette..................................................... 40 Part VIII: Common, Transitional and Final Provisions Full Powers for the Issue of Implementing Regulations 41 Transitional Provisions................................................. 42 Repeal Provisions.......................................................... 43 [Without title]................................................................ 44
1. A trademark is a sign that consists of words, letters, numerals, drawings or the shape of goods or their packaging, or a combination thereof, intended to distinguish goods or services of various undertakings and registered in the Trademark Register (hereinafter referred to as “the Register”) kept by the Industrial Property Office (hereinafter referred to as “the Office”).
2.—(1) The following are excluded from registration:
(a) a sign that is not capable of being represented graphically;
(b) a sign that is devoid of the ability to distinguish goods or services;
(c) a sign that consists exclusively of signs or indications serving in trade to designate the kind, quality, quantity, intended purpose or value of goods or services, and of indications of geographical origin or of the time of production of the goods or rendering of the service;
(d) a sign that consists exclusively of signs or indications that have become customary in everyday language or in the bona fide and established practices of the trade;
(e) a sign that consists exclusively of the shape of goods, results from the nature of the goods themselves or is necessary to obtain a technical result or gives substantial value to the goods;
(f) a sign that is contrary to public policy or to accepted principles of morality;
(g) a sign that is capable of deceiving the public, notably as to the nature, quality or geographical origin of the goods or services;
(h) a sign the use of which would be contrary to the obligations of the Czech Republic under international treaties.
(2) A sign as referred to in paragraph (1)(b) to (d) may be registered if the applicant proves that it has acquired distinctive character in relation to his goods or services following its use in business, such use having started at least two years before the filing of the trademark application (hereinafter referred to as “the application”).
3.—(1) The Office shall not register a sign identical to a trademark that is applied for or registered by another owner for identical or similar goods or services with earlier priority rights, or including elements of a mark that is applied for or registered with which it is liable to cause confusion.
(2) The Office shall not register a sign identical to a trademark that has lapsed according to Article 24(1)(a) where the application is filed before the expiration of a period of two years from the date of lapse of the trademark, unless registration of the mark is applied for by the person in whose name the trademark was registered on the day when it lapsed or by his successor in title.
(3) The Office shall not register a sign infringing legally protected earlier rights of third parties on receipt of duly and reasonably declared objections under Article 9.
4.—(1) Registration of a sign as a trademark on the Register (hereinafter referred to as “registration of a trademark”) shall be requested by the filing of an application with the Office.
(2) The application may be filed by any natural or legal person (hereinafter referred to as “the applicant”) in relation to goods and services covered by his economic activity on the filing date of the application.
5.—(1) The application shall contain:
(a) the request for registration of a trademark;
(b) the forename and surname or title of the applicant or his trade name, the address of his residence and place of business when the applicant is a natural person, or of the headquarters when the applicant is a legal person;
(c) the wording or a representation of the trademark and, in the case of a three-dimensional mark, a representation of its outer surface;
(d) a list of the goods or services for which the mark is to be registered.
(2) The list of goods and services referred to in paragraph (1)(d) shall mention the classification under the international treaty. 1
6.—(1) A filing of an application that complies with the requirements referred to in Article 5(1) shall confer on the applicant a right of priority over any person filing an application later for an identical or confusingly similar trademark in respect of identical or similar goods or services.
(2) The right of priority under the international treaty 2 must be claimed by the applicant in the application, and proof of the right must be furnished within a period of three months from the filing date of the application, otherwise it shall not be respected by the Office.
7.—(1) At the request of the applicant the Office shall allow alteration of the applied sign with respect to the title of the applicant, or his forename and surname or his trade name, or the applicant’s headquarters or place of residence or business, provided that the change occurred after the filing of the application, and provided that such alteration makes the particulars given therein consistent with reality without affecting the general nature of the trademark. No other alteration of the particulars mentioned in Article 5(1)(c) shall be authorized after the filing of the application.
(2) After the filing of the application the applicant may restrict the list of goods or services in respect of which the trademark is to be registered; the restriction may not be withdrawn.
(3) Until the trademark is registered, the applicant may divide an application that lists several goods or services. The priority right shall be preserved also for divided applications provided that they list only goods or services listed in the original application.
(4) The applicant may, in a written contract, transfer his application right in respect of all the goods or services or only some of them to another entrepreneur who is qualified to be an owner of the trademark according to this Law.
8.—(1) The Office shall subject the application to an examination.
(2) Where an application for registration of a trademark does not satisfy the prescribed requirements, the Office shall invite the applicant to remedy the defects within a fixed term. If the application does not satisfy the conditions of Article 5(1), the Office shall fix a term of two months for the defects to be remedied; in that case the date of filing of the documents with the defects removed shall be regarded as the filing date of the application.
(3) When the sign applied for does not satisfy the registration requirements laid down by this Law, the Office shall refuse the application.
(4) Where the application meets all the prescribed formalities and the sign is not refused from registration under paragraph (3), the Office shall publish the application in the Gazette of the Industrial Property Office (hereinafter referred to as “the Gazette”).
9.—(1) Legally justified objections to the registration in the Register of a published trademark may, within three months from the date of publication, be filed with the Office by:
(a) the owner of or applicant for a confusingly similar trademark with an earlier priority right, where that trademark is registered or applied for the same or similar goods or services;
(b) the owner of an earlier identical or confusingly similar trademark which, before the filing of the application was a well-known mark under an international treaty, 3 in the Czech Republic and characteristic of its owner in relation to his goods or services (hereinafter referred to as “well-known mark”);
(c) the holder of an identical or confusingly similar sign that has become characteristic in the Czech Republic in the previous two years, before the filing of the application, for the identical or similar goods or services of that owner;
(d) an entrepreneur registered before the filing date of the application in the trade or a similar register, where his trade name or a substantial part of it is identical or confusingly similar to the published sign and where he produces identical or similar goods or renders identical or similar services in connection with which the published sign is applied for, or where such goods constitute his commercial activity;
(e) a natural person, whose forename and surname or representation or pseudonym are identical or confusingly similar to the published denomination, where the registration of the denomination might interfere with his personal rights;
(f) the owner of earlier rights from another form of industrial property where the subject thereof is identical or confusingly similar to the published sign;
(g) any person to whom the copyright in an author’s work identical or confusingly similar to the published sign belongs, where its use might interfere with the said copyright.
(2) The period for filing objections to the registration of a published sign in the Register may not be extended.
10.—(1) The Office shall examine whether the objections have been filed by an authorized person within the period laid down by law and whether the objections are legally justified and supported by such documents as will enable it to proceed.
(2) The Office shall terminate the objection procedure where the filing of objections is late, has been effected by an unauthorized person, is not justified or is not supported by the documentation necessary for the procedure. The Office shall be obliged to inform the person who has filed the objections accordingly.
(3) The Office shall inform the applicant of duly filed objections and invite him to submit observations within the time limit set. The time limit shall not be shorter than 10 days.
(4) Where the applicant does not submit observations within the time limit set, the Office shall terminate the procedure; the applicant shall have been informed of this consequence in the invitation.
11.—(1) Where objections have been duly filed and the applicant has submitted observations, the Office shall examine whether or not the registration of the sign applied for in the Register will infringe the rights of third parties.
(2) Where the Office finds that the sign applied for does not infringe the prior rights of third parties that are protected by law, it shall refuse the objections; it shall submit its written decision to the applicant and to the person who has filed the objections.
(3) Where the Office finds that the sign applied for does not satisfy the conditions for registration in the Register, it shall refuse the application and submit its written decision to the applicant and to the person who has filed the objections.
12.—(1) The Office shall register the trademark in the Register where the circumstances mentioned in Articles 2 and 3 do not constitute an obstacle to registration. The Office shall inform the applicant accordingly.
(2) After registration of the trademark in the Register, the applicant becomes the trademark owner. At the request of the owner the Office shall issue a certificate attesting registration of the trademark in the Register.
(3) The Office shall announce in the Gazette the registration of the trademark in the Register within not more than six months following the registration.
13.—(1) The owner of a trademark shall have the exclusive right to affix his mark on the goods or services for which it has been registered or to use it in relation to such goods or services.
(2) The owner of a trademark shall be entitled to use the circled ® symbol in conjunction with the trademark.
14.—(1) No one may use a trademark without the authorization of its owner or use a sign that is identical or confusingly similar to the mark for identical or similar goods and services as those for which the trademark is registered, or use it in relation to such goods and services, especially to affix it on the goods and their packaging, offer or place goods on the market under the sign, or store for that purpose, import or export goods under the sign, or use such sign in a trade name, in correspondence or in advertisements.
(2) The owner of the trademark shall be entitled to demand of any person who places or intends to place goods or services on the market information concerning the origin of the goods, or documentation on the goods or services themselves, on which an identical or confusingly similar sign to his trademark has been affixed. The owner shall prove his entitlement to the trademark by showing the certificate of trademark registration or an extract from the Register.
(3) The Customs Office, at the request of the owner of the trademark, shall refuse to release goods that are of commercial character for free circulation 4 where the sign thereof infringes the rights of the trademark owner. The owner shall prove his entitlement to the trademark by showing the certificate of trademark registration or an extract from the Register.
(4) The trademark owner shall be entitled to demand of the editor of a publication in which his trademark is reproduced that he publish the particulars of the trademark, including the registration number thereof.
15.—(1) The owner of the trademark may request the competent court to order a prohibition on the use of his trademark or a confusingly similar sign for identical or similar goods or services, and the withdrawal from the market of objects to which it has been affixed in a manner that infringes his rights.
(2) The owner of a well-known mark may exercise his right under paragraph (1) notwithstanding the identicalness or similarity of the goods or services where use of the well-known trademark on different goods or services might suggest a relationship between the goods or services so marked and the owner of the well-known trademark, and where the interests of the owner of the well-known trademark might be prejudiced by such use.
(3) Where harm has been done by the infringement of trademark rights, the injured party shall be entitled to compensation therefor. Where infringement of trademark rights has caused an immaterial prejudice, the injured party shall be entitled to adequate satisfaction, which may be given in monetary form.
16.—(1) The owner of a trademark shall be obliged to acquiesce to third parties using, in commercial relations, their forename, surname, pseudonym, title or trade name, the address of their residence, information concerning the type, quality, quantity, purpose, value, geographical origin or time of production of goods or rendering of services, or another character of a product or service, even where those data are identical or confusingly similar to the trademark or form part of the trademark, but only on condition that the data are used in accordance with established practice in trade or fair competition.
Articles
1. A trademark is a sign that consists of words, letters, numerals, drawings or the shape of goods or their packaging, or a combination thereof, intended to distinguish goods or services of various undertakings and registered in the Trademark Register (hereinafter referred to as “the Register”) kept by the Industrial Property Office (hereinafter referred to as “the Office”).
2.—(1) The following are excluded from registration:
(a) a sign that is not capable of being represented graphically;
(b) a sign that is devoid of the ability to distinguish goods or services;
(c) a sign that consists exclusively of signs or indications serving in trade to designate the kind, quality, quantity, intended purpose or value of goods or services, and of indications of geographical origin or of the time of production of the goods or rendering of the service;
(d) a sign that consists exclusively of signs or indications that have become customary in everyday language or in the bona fide and established practices of the trade;
(e) a sign that consists exclusively of the shape of goods, results from the nature of the goods themselves or is necessary to obtain a technical result or gives substantial value to the goods;
(f) a sign that is contrary to public policy or to accepted principles of morality;
(g) a sign that is capable of deceiving the public, notably as to the nature, quality or geographical origin of the goods or services;
(h) a sign the use of which would be contrary to the obligations of the Czech Republic under international treaties.
(2) A sign as referred to in paragraph (1)(b) to (d) may be registered if the applicant proves that it has acquired distinctive character in relation to his goods or services following its use in business, such use having started at least two years before the filing of the trademark application (hereinafter referred to as “the application”).
3.—(1) The Office shall not register a sign identical to a trademark that is applied for or registered by another owner for identical or similar goods or services with earlier priority rights, or including elements of a mark that is applied for or registered with which it is liable to cause confusion.
(2) The Office shall not register a sign identical to a trademark that has lapsed according to Article 24(1)(a) where the application is filed before the expiration of a period of two years from the date of lapse of the trademark, unless registration of the mark is applied for by the person in whose name the trademark was registered on the day when it lapsed or by his successor in title.
(3) The Office shall not register a sign infringing legally protected earlier rights of third parties on receipt of duly and reasonably declared objections under Article 9.
4.—(1) Registration of a sign as a trademark on the Register (hereinafter referred to as “registration of a trademark”) shall be requested by the filing of an application with the Office.
(2) The application may be filed by any natural or legal person (hereinafter referred to as “the applicant”) in relation to goods and services covered by his economic activity on the filing date of the application.
5.—(1) The application shall contain:
(a) the request for registration of a trademark;
(b) the forename and surname or title of the applicant or his trade name, the address of his residence and place of business when the applicant is a natural person, or of the headquarters when the applicant is a legal person;
(c) the wording or a representation of the trademark and, in the case of a three-dimensional mark, a representation of its outer surface;
(d) a list of the goods or services for which the mark is to be registered.
(2) The list of goods and services referred to in paragraph (1)(d) shall mention the classification under the international treaty. 1
6.—(1) A filing of an application that complies with the requirements referred to in Article 5(1) shall confer on the applicant a right of priority over any person filing an application later for an identical or confusingly similar trademark in respect of identical or similar goods or services.
(2) The right of priority under the international treaty 2 must be claimed by the applicant in the application, and proof of the right must be furnished within a period of three months from the filing date of the application, otherwise it shall not be respected by the Office.
7.—(1) At the request of the applicant the Office shall allow alteration of the applied sign with respect to the title of the applicant, or his forename and surname or his trade name, or the applicant’s headquarters or place of residence or business, provided that the change occurred after the filing of the application, and provided that such alteration makes the particulars given therein consistent with reality without affecting the general nature of the trademark. No other alteration of the particulars mentioned in Article 5(1)(c) shall be authorized after the filing of the application.
(2) After the filing of the application the applicant may restrict the list of goods or services in respect of which the trademark is to be registered; the restriction may not be withdrawn.
(3) Until the trademark is registered, the applicant may divide an application that lists several goods or services. The priority right shall be preserved also for divided applications provided that they list only goods or services listed in the original application.
(4) The applicant may, in a written contract, transfer his application right in respect of all the goods or services or only some of them to another entrepreneur who is qualified to be an owner of the trademark according to this Law.
8.—(1) The Office shall subject the application to an examination.
(2) Where an application for registration of a trademark does not satisfy the prescribed requirements, the Office shall invite the applicant to remedy the defects within a fixed term. If the application does not satisfy the conditions of Article 5(1), the Office shall fix a term of two months for the defects to be remedied; in that case the date of filing of the documents with the defects removed shall be regarded as the filing date of the application.
(3) When the sign applied for does not satisfy the registration requirements laid down by this Law, the Office shall refuse the application.
(4) Where the application meets all the prescribed formalities and the sign is not refused from registration under paragraph (3), the Office shall publish the application in the Gazette of the Industrial Property Office (hereinafter referred to as “the Gazette”).
9.—(1) Legally justified objections to the registration in the Register of a published trademark may, within three months from the date of publication, be filed with the Office by:
(a) the owner of or applicant for a confusingly similar trademark with an earlier priority right, where that trademark is registered or applied for the same or similar goods or services;
(b) the owner of an earlier identical or confusingly similar trademark which, before the filing of the application was a well-known mark under an international treaty, 3 in the Czech Republic and characteristic of its owner in relation to his goods or services (hereinafter referred to as “well-known mark”);
(c) the holder of an identical or confusingly similar sign that has become characteristic in the Czech Republic in the previous two years, before the filing of the application, for the identical or similar goods or services of that owner;
(d) an entrepreneur registered before the filing date of the application in the trade or a similar register, where his trade name or a substantial part of it is identical or confusingly similar to the published sign and where he produces identical or similar goods or renders identical or similar services in connection with which the published sign is applied for, or where such goods constitute his commercial activity;
(e) a natural person, whose forename and surname or representation or pseudonym are identical or confusingly similar to the published denomination, where the registration of the denomination might interfere with his personal rights;
(f) the owner of earlier rights from another form of industrial property where the subject thereof is identical or confusingly similar to the published sign;
(g) any person to whom the copyright in an author’s work identical or confusingly similar to the published sign belongs, where its use might interfere with the said copyright.
(2) The period for filing objections to the registration of a published sign in the Register may not be extended.
10.—(1) The Office shall examine whether the objections have been filed by an authorized person within the period laid down by law and whether the objections are legally justified and supported by such documents as will enable it to proceed.
(2) The Office shall terminate the objection procedure where the filing of objections is late, has been effected by an unauthorized person, is not justified or is not supported by the documentation necessary for the procedure. The Office shall be obliged to inform the person who has filed the objections accordingly.
(3) The Office shall inform the applicant of duly filed objections and invite him to submit observations within the time limit set. The time limit shall not be shorter than 10 days.
(4) Where the applicant does not submit observations within the time limit set, the Office shall terminate the procedure; the applicant shall have been informed of this consequence in the invitation.
11.—(1) Where objections have been duly filed and the applicant has submitted observations, the Office shall examine whether or not the registration of the sign applied for in the Register will infringe the rights of third parties.
(2) Where the Office finds that the sign applied for does not infringe the prior rights of third parties that are protected by law, it shall refuse the objections; it shall submit its written decision to the applicant and to the person who has filed the objections.
(3) Where the Office finds that the sign applied for does not satisfy the conditions for registration in the Register, it shall refuse the application and submit its written decision to the applicant and to the person who has filed the objections.
12.—(1) The Office shall register the trademark in the Register where the circumstances mentioned in Articles 2 and 3 do not constitute an obstacle to registration. The Office shall inform the applicant accordingly.
(2) After registration of the trademark in the Register, the applicant becomes the trademark owner. At the request of the owner the Office shall issue a certificate attesting registration of the trademark in the Register.
(3) The Office shall announce in the Gazette the registration of the trademark in the Register within not more than six months following the registration.
13.—(1) The owner of a trademark shall have the exclusive right to affix his mark on the goods or services for which it has been registered or to use it in relation to such goods or services.
(2) The owner of a trademark shall be entitled to use the circled ® symbol in conjunction with the trademark.
14.—(1) No one may use a trademark without the authorization of its owner or use a sign that is identical or confusingly similar to the mark for identical or similar goods and services as those for which the trademark is registered, or use it in relation to such goods and services, especially to affix it on the goods and their packaging, offer or place goods on the market under the sign, or store for that purpose, import or export goods under the sign, or use such sign in a trade name, in correspondence or in advertisements.
(2) The owner of the trademark shall be entitled to demand of any person who places or intends to place goods or services on the market information concerning the origin of the goods, or documentation on the goods or services themselves, on which an identical or confusingly similar sign to his trademark has been affixed. The owner shall prove his entitlement to the trademark by showing the certificate of trademark registration or an extract from the Register.
(3) The Customs Office, at the request of the owner of the trademark, shall refuse to release goods that are of commercial character for free circulation 4 where the sign thereof infringes the rights of the trademark owner. The owner shall prove his entitlement to the trademark by showing the certificate of trademark registration or an extract from the Register.
(4) The trademark owner shall be entitled to demand of the editor of a publication in which his trademark is reproduced that he publish the particulars of the trademark, including the registration number thereof.
15.—(1) The owner of the trademark may request the competent court to order a prohibition on the use of his trademark or a confusingly similar sign for identical or similar goods or services, and the withdrawal from the market of objects to which it has been affixed in a manner that infringes his rights.
(2) The owner of a well-known mark may exercise his right under paragraph (1) notwithstanding the identicalness or similarity of the goods or services where use of the well-known trademark on different goods or services might suggest a relationship between the goods or services so marked and the owner of the well-known trademark, and where the interests of the owner of the well-known trademark might be prejudiced by such use.
(3) Where harm has been done by the infringement of trademark rights, the injured party shall be entitled to compensation therefor. Where infringement of trademark rights has caused an immaterial prejudice, the injured party shall be entitled to adequate satisfaction, which may be given in monetary form.
16.—(1) The owner of a trademark shall be obliged to acquiesce to third parties using, in commercial relations, their forename, surname, pseudonym, title or trade name, the address of their residence, information concerning the type, quality, quantity, purpose, value, geographical origin or time of production of goods or rendering of services, or another character of a product or service, even where those data are identical or confusingly similar to the trademark or form part of the trademark, but only on condition that the data are used in accordance with established practice in trade or fair competition.