Trademarks

What is a trademark?

A trademark is a symbol used to identify the goods or services of a particular entity. A trademark is most often worded, figurative or combined and serves to protect against unauthorized use of the same or similar sign by another competitor in the market. A trademark is territorial in nature and is created by registering with the relevant authorities. Its proprietor gains the right to the exclusive use of that mark in connection with the goods or services for which it is registered.

Can a trademark be patented?

No, a trademark and a patent are two different things and cannot be confused. A trademark protects a brand, logo or the name of a product or service, while a patent protects an invention. A trademark is a registered mark used to identify goods or services. A trademark gives its owner the exclusive right to use it and serves to protect it from unauthorized use by others.

A patent, on the other hand, protects an invention, i.e. a new and useful technical process, device, material or procedure. A patent gives the holder the right to exclusive use of the invention for a certain period of time and protects it from unauthorized use by others. Although a trademark cannot be patented, the registration of a trademark can be complementary to a patent procedure if it relates to an invention. For example, if the trade mark serves to identify a product that is protected by a patent.

What should I do before registering a trademark?

Before registering a trademark, it is important to carry out market research and check whether there is already a similar or identical trademark registered by another company. This research can be carried out independently or with our assistance. It is also important to choose the appropriate form of the trademark (word, image or combination) and prepare the documents for registration, including a description of the goods or services for which the trademark will be used. It is also important to choose the appropriate class of goods or services for which the trade mark will be registered. If this feels unclear and you  need advice, we will be happy to help.

Why register a trademark?

A trademark gives the owner the right to exclusive use of the mark in connection with the goods or services for which it is registered. This means that no other entity can use the same or similar trademark for the same goods or services without the consent of the trademark owner. Trademark registration also provides legal protection against unauthorized use of the same or similar mark by another entity. Last but not least, trademark registration increases the value of a business and can be used as a business tool for advertising and attracting new customers and expanding the market.

Do you know who you register your industrial rights with?

The Industrial Property Office once again warns applicants and owners of industrial rights and their representatives that they may be approached in writing or electronically by certain private companies which offer, for various fees in different currencies, to publish, register or register industrial rights in their registers or databases maintained on the Internet. For more information, see https://upv.gov.cz/o-uradu/varovani-nevyzadane-nabidky-na-uzavreni-smlouvy.

What is a European Union trade mark?

An EU trade mark provides protection to all member states of the European Union, has uniform protection and is registered with the European Union Intellectual Property Office (EUIPO) based in Spain. Registration of an EU trade mark gives the holder the exclusive right to use the mark throughout the European Union at the same time in connection with the goods or services for which it is registered.

EU trade mark registration is suitable for businesses that operate in several countries of the European Union and wish to have uniform protection of their trade mark throughout it.

How long does it take to get a trademark?

The time it takes to obtain a trademark can vary depending on the country where the registration procedure is taking place and the complexity of the case. In some countries, the trademark registration process can be quick and take only a few months, while in other countries it can take several years. On average, however, the trademark registration process takes between 6 months and 2 years. It is important to keep in mind that the trademark registration process can be delayed if incorrect or incomplete documents are filed or if an opposition to the trademark registration is filed by another entity. Therefore, it is important to have good legal representation and to prepare the trademark registration documents carefully.

How can I obtain a trademark abroad outside the European Union?

There are two ways:

1. National 

You need to contact the competent IP office in the designated country. Each country has its own trademark registration system and the requirements for registration may vary. It is also necessary to have a local attorney for the registration procedure. It is therefore important to consider carefully whether registering a trademark abroad is appropriate for your business and to obtain quality legal representation in that country, which we will be happy to arrange for you as well as offer a help with preparing  documents for registration, including a description of the goods or services for which the trademark will be used.

 2. International 

International trademark registration is a method of trademark registration that allows trademark owners to register their marks in several countries at once, using a single application. This  reduces costs and simplifies the trademark registration process. The international trademark is based on the Madrid Agreement on the International Registration of Marks and is administered by the World Intellectual Property Organization (WIPO).

An international trademark application is filed through the Industrial Property Office of the Czech Republic and if the application is approved, the trademark will be registered in countries of the owner's choice. We will be happy to help you with the application.

For more information visit https://upv.gov.cz/prumyslova-prava/ochranne-znamky/mezinarodni-ochranna- trademark

What should I do if I learn that someone else is using the same or a similar trademark?

If another party is found to be using a trademark in an unauthorized manner, a lawsuit may be filed against the infringer and damages may be sought. In any case, it is important to act quickly and consult with a legal professional to prevent further use of the same or similar trademark by another entity and to protect your rights. We are highly experienced in trademark enforcement and will be happy to take on your case. If you have a registered trademark and you intercept an application for the same or similar trademark, you can file an opposition to its registration. We offer a MONITORING service to search for conflicting applications.

What is Trademark MONITORING?

Trademark monitoring is the process of monitoring trademark applications filed by other entities and identifying potential trademark infringements. Trademark monitoring can be carried out manually or by using specialized software. The aim of monitoring is to protect the rights of the trademark owner and to prevent unauthorized use of the same or similar trademark by another entity. Trademark monitoring is important for the protection of trademark rights because it enables the owner to catch infringers early and can effectively prevent the registration of a conflicting mark by another entity.

We have established a successful cooperation with Corsearch®, which, in addition to trademark monitoring, offers other Brand Risk and Performance services, such as trademark registry searches and screenings, domain searches, investigations of trademark use on the Internet and in the online environment, searches of trade registers and, last but not least, offers in-depth investigation services, anti-piracy measures and anti-counterfeiting. The parameters of the MONITORING service offered by our office to trademark owners are set out in the leaflet which can be downloaded here.

When can I use the R symbol in the ® ring?

The ® symbol is used to indicate a registered trademark. You can only start using this symbol after your trademark has been successfully registered with the relevant office. You are letting others know that your trademark registration is protected by law. If you use this symbol before registering your trademark, it may be considered unauthorized use of the trademark and may lead to legal problems.