Articles

News in the area of trademarks

Written by Andrea Vrbovská

The owners of trademarks and persons interested in trademark registration shall be aware, that as of 14th January 2019, an amendment of the Act. no. 506/2009 Coll. on trademarks as amended (hereinafter referred to as the „Amendment“) (1), came into force and therefore, fundamental changes related to trademarks were put into practice.

 

One of the most important changes brought by the Amendment was a change in the definition itself. In order to determine whether a certain mark may be registered as a trademark, it is no longer necessary to create a graphic illustration of the mark, as this, according to the European Commission, is deemed as an anachronism, which is not in compliance with the modern conception of the trademarks. The mark shall be expressed in a way that enables a clear and straight identification of the object protected by the trademark. The requirement of the mark to distinguish products and services, shall remain in existence. The possibility of a sound as a trade mark has also been introduced by the Amendment.

 

Another fundamental change that has been introduced by the Amendment concerns the registration process of a trademark; during the process of a trademark registration with the register of trademarks (hereinafter referred to as the „register“), the Industrial Property Office of the Slovak Republic (hereinafter referred to as the „Office“) will no longer take into account the so called „double identity“ of a mark in an application. The double identity means, that a mark in an application is identical with an already registered trademark, thus the older trademark, and consequently identical with products and services registered under this older trade mark. In cases where the Office discovers the existence of the double identity, the existence of an identical trade mark and the owner of this (older) trademark will be, under new legislation, only informed about the pertinent situation by the Office. Afterwards, it is solely up to the owner, whether he takes steps against registration of the mark identical with his trademark, and that, via objections against registration of the mark with the register (hereinafter referred to as the „objections“), which have to be filed in a period of 3 months from publication of the application in the Journal of the Office.

 

The owner (objector) is however, entitled to grant a written consent with the registration of the mark with the register, even after he filed the objections; in this case, the filed objections are deemed withdrawn and the proceedings are ceased. The Amendment also introduced the possibility of a settlement between an applicant and an objector during the objections proceedings, in case both of them request it.

 

With respect to the fact that, pursuant to new legislation, protection shall solely be granted to the trademarks which are actually used; the applicant, during the objections proceedings is entitled to challenge the objector to prove the usage of the registered trademark during a 5 year period preceding the day the application of the latter mark was filed or to prove the existence of reasons justifying the disuse of the trade mark. The above mentioned shall therefore apply only to the trademarks registered with the register for a period of at least 5 years preceding the day the application of the latter mark was filed. The pertinent possibility to challenge the objector represents in its essence a protection of the applicant, which may be used during the objections proceedings within a period of 2 months from the announcement of objections by the Office. In the situation where the objector fails to prove the aforementioned matters, his objections will be dismissed by the Office. The failure to prove the pertinent matters may also result in an application for revocation of the trademark. The reasons justifying the disuse of the trademark may solely be reasons which do not vest in the will of the owner of the trademark, are directly linked to the trademark and which will disable its use or make its use inappropriate; for example, commercial restrictions, other government measures or natural disasters.

 

In light of the aforesaid change in requirements taken into consideration during the process of registration by the Office, cases of double identicality may occur quite frequently. Under these circumstances, the owner of the older trade mark is entitled to file an application to declare the latter trademark void. This right of the owner is, however, limited. The owner of the older trademark will not be entitled to apply for a declaration of the latter trademark void in case, he had knowledge of its use for a period of 5 years and if he tolerated its use during this period. The only exemption, shall be considered a case, when the application of the latter trademark was not filed in good faith. Simultaneously, the owner of the latter trademark will be limited, as he will be obliged to tolerate the use of the older trademark.

In compliance with the already mentioned principle, that the protection shall be granted solely to the trademarks actually used, it’s also a new provision of the Amendment, under which it will be possible to revoke the trade mark on a request in case, the owner does not commence to truly use the trademark in a period of 5 years from its registration or if the use of the trademark is interrupted for a period of at least 5 years. This shall not apply in an event where the owner has a reasonable justification for the disuse of the trademark.

Aside from the above mentioned, the Amendment also introduced other changes, for example that the legal entity governed by the public law is entitled to register a collective trademark or specific cases of revocation and invalidity of the collective trademark or a possibility to amend the contract on usage of the collective trademark, as well as clarification, that a certificate on registration of the trademark with the register and a certificate on a right to priority shall be issued by the Office solely in a written paper form or a duty of the Office to announce an expiration of validity of a trademark registration at least 6 months in advance, whereas this information is not considered legally binding and even in the event, the Office does not adhere to this obligation, it should not constitute its liability, and many other changes.

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            (1)          Main purpose of the Amendment was a transposition of the Directive (EU) 2015/2436 of the European parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to the trade marks (hereinafter referred to as the “Directive”). The Directive and the Amendment shall contribute mainly to the harmonization of the trade mark legislation within the European Union, simplification and effectivity of the process and overall enhancement of modern concept of the legislation.

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