New trademark act in the Czech Republic

Czech Republic

The Czech Parliament recently adopted a new Trademark Act. The new legislation, in comparison to the previous act of 1995, modernizes trademark regulations to reflect progressive tendencies in the trademark law of European countries, and reflects the need to fully harmonize Czech trademark law in view of the forthcoming accession to the EU.

Major changes: 

  1. The concept of the Community Trademark has been introduced, in full compliance with Regulation EC 40/94. There is a transitional provision dealing with possible conflicts between national trade marks and Community ones: The proprietor of a national trademark, who has submitted an application for registration in good faith, prior to accession, is entitled to prohibit the use of a Community trademark in the territory of the Czech Republic (if it is identical or there is a likelihood of confusion).

  2. Likelihood of association is expressly included along with likelihood of confusion as a possible ground for refusal of registration and a reason for prohibition of usage.

  3. Lack of good faith is expressly stated as a possible ground for refusal of a registration.

  4. The broad, protectionist concept whereby the proprietor of a generally known (unregistered) trade mark was entitled to ban its use for all goods and services (not only identical or similar ones) has been abandoned. From now on, the two following restrictions will apply:

    i - A generally known (unregistered) trademark enables its proprietor to ban its use for similar or identical goods or services only.

    ii -
    The concept of a trademark enjoying good reputation has been introduced. Such a trade mark (usually registered, but not necessarily, in which case it would also be a generally known trade mark) enables its proprietor to also ban its use for goods or services which are not similar to those in respect of which the trade mark is registered

  5. There is a more detailed regulation concerning the deletion of trademarks from the Register of Trademarks: the concepts of invalidity, revocation and surrender have been adopted (compliant with the above Regulation).

The new act enters into legal force on April 1, 2004, only provisions regarding Community Trademarks (point 1) become effective as of accession, i.e. May 1, 2004. For further information please contact Peter Valert or Jan Rataj at +420 221 098 888 or at peter.valert@cms-cmck.com or jan.rataj@cms-cmck.com