The Trademark Law amendments shall pass over new obligations from the registration offices directly to the trademark owners.
8. června 2017 17:52
From the EU harmonisation reasons, the obligations of the state offices shall be shifted to the trademark owners. All trademark proprietors must be aware of these changes in order to be prepared to a responsible fulfilment of these new obligations.
Let mi inform you about the upcoming changes regarding the trademark law, that are going to change the position of the trademark proprietors in a very substantial way. The expected amendment of the current Trade Mark Act has not been prepared yet for the first reading, anyway the works on its transformation have started already. From the harmonisation reasons of our law to EU Regulations, the obligations of the authorities are going to be shifted from the state offices to the trade mark holders. All trademark owners must be aware of these changes in order to be prepared to a responsible fulfilment of the new obligations.
Czech Republic has been bounded by the Directive of the Parliament and the Council (EU) No. 2015/2436 of 16.12.2015, approximating the national trade mark laws and procedures in the EU with the aim of making them more consistent with the EU trade mark system. According to this regulation the EU member states are obliged to implement the changes into the national laws until January 15th, 2019. If not, the EU law shall come into force.
The most visible change relates to the extent of protection, that is going to be enabled by the new law. Denominations consisting of words, letters, numbers, a drawing or a shape, or possibly combination of the said, could create a trademark, if the claim for distinguishing ability set by the law was accomplished at the same time. Denominations that were not able to be represented in a graphical way, cannot have been registered as a trademark. Nevertheless, according to the new arrangement any denomination can become a trademark, if it is represented in a way, that enable the respective offices and the public to clearly and exactly determine the object of protection. The claims in respect of distinguishing ability remain unchanged. This new trademark definition releases a possibility of registration of new types of sound and olfactory trademarks, alternatively holograms, that have been excluded from its protection until now. Future and new technologies shall bring new types of trademarks, the modification of law is prepared for this even now. The change of trademark extent of protection is rather progressive, however for common users is not as fundamental. The most of new trademarks are expected to be filed in classical forms represented graphically.
The breaking change that is going to hit all trademark proprietors having registered marks historically or having new trademarks, is related to the enumeration of absolute grounds for refusal. According to the recent law the Industrial Property Office examines ex-officio as a registration condition the existence of earlier identical trademark rights. The trademark proprietors were responsible only for watching the confusingly similar denominations that were filed for registration after their trademarks in order to prevent their registration in opposition proceedings and restrict the confusion of signs on the market. The majority of the Czech trademark proprietors the possibility of trademark monitoring have not utilized in any particular way. They were depended on the official liability of the Office set in Par. 6 of the Trademark Act No. 441/2003, Coll. According to this regulation the Office shall not register any denomination in the Trademark Register that is identical with the trademark that is applied for or registered for same of similar goods or services with an earlier priority right, or consists of elements of applied or registered trademark, that could lead to a confusion. Such a denomination could have been registered only if the owner of the earlier trademark has granted his consent with its registration.
The new law does not anticipate with the regulation of Par. 6 as it is retreating to the current practice. The Office shall not be bounded by its duty to examine the prior rights in the trademark database. Upon receiving the trademark application the Office shall register all trademark that are able to consist a trademark according to a new trademark definition mentioned above. In the frame of harmonisation of a national law with the EU regulations we can notice this tendency already now, as there is a shift in interpretation concerning the question what is falling under the identical rights according to Sec. 6. This extent is getting narrow already now.
In the connection with the new amendments of our trademark law and in the light of the shift of the official practice we are making an appeal to all the trademark owners in order to make them watch actively their trademark rights and monitor the new trademark applications of the competitors, as after some time of its toleration and sufferance of use of the registered rights, the earlier rights are becoming unenforceable. Based on our Monitoring® services it is possible to watch the Trademark Register and take the appropriate steps in time. For more information kindly contact us.