Trade and Service Marks

– Trade Mark Act No. 441/2003 of December 3, 2003, in force since April 1, 2004, last amendment in force since January 1, 2019.
– Decree No. 97/2004 of February 20, 2004, in force since April 1, 2004.
– Act No. 221/2006 Coll. of April 25, 2006 on Enforcement of Industrial Property Rights and on the Amendment of Industrial Property Protection Acts.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since January 1, 1993.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 1, 1993.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act 1967, since January 1, 1993.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act, since January 1, 1993.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act 1977, since January 1, 1993.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, since January 1, 1993.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Trademark Law Treaty, since August 1, 1996.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since September 25, 1996.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 16, 1999.
– European Union Trade Mark Regulation.

Filing

Applicants: nationals or foreigners. 

Applicants not living in the country: must appoint a representative for any proceedings brought before the Patent Office. 

Trademarks of foreigners: subject to reciprocity, foreigners have the same rights as Czech citizens. 

Kinds of protection: trademarks comprising a word or device or a combination of both, two- and three-dimensional designations, colors. As of January 1, 2019 it is possible to register unconventional trademarks such as position, pattern, motion, audio visual or sound marks, holograms. 

Services marks: registrable.

Novelty: examination as to identical trademarks or trademarks containing the same elements, which could cause confusion with respect to identical goods or services.

Not registrable: (a) a sign not capable of being represented in a manner to enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor; (b) a sign not capable of distinguishing the goods or services; (c) a sign that consists exclusively of signs or indications, serving in trade to designate the kind, quality, quantity, intended purpose, value or other characteristics of goods or services, of indications of the geographical origin or the time of production of the goods or rendering of the service; (d) consisting exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade; (e) a sign consisting exclusively of the shape of the good which results from the nature of the good itself or which is necessary to obtain a technical result or which gives substantial value to the good; (f) a sign which is contrary to public order or morality; (g) a sign likely to deceive the public, namely 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 resulting from the international treaties; (i) a denomination containing the sign of a high symbolic value, namely religious symbols; and (j) a denomination applied for wines or spirits, containing the geographical indication, with respect to the wines and spirits not having that geographical origin. Signs referred to in items (b) to (d) may be registered if the applicant demonstrates that the sign has acquired distinctive character for his goods or services following its use in business before the registration. The Patent Office shall not register a sign identical with a trademark, which is already applied for or registered by another owner for identical goods or services with earlier priority rights, or including elements of a sign, which is already applied for, or of a trademark which could lead to confusion. The sign can be registered, if the trademark owner or applicant with the earlier right of priority, grants a written consent to the registration of the sign in the Trademark Register. The Patent Office shall not register a sign identical with a trademark, which has lapsed if the period of protection expired, where the application was filed before the expiry of a period of two years as from the date of lapse of the trademark. The Patent Office shall not register upon the occurrence of declared objections a sign, which is infringing legally protected earlier rights of third persons.

Priorities: Convention applications must be filed within six months of the date of the basic application. The date, number and country of the basic application must be indicated in the Czech application and cannot be supplemented later.

Classification: International Classification, according to the Agreement of Nice in the revised Stockholm version. 

Multi-class applications: possible. 

Territory covered: the Czech Republic.

Filing requirements (to be sent to resident agent):
For registration:

1. Power of attorney (signed by applicant, without legalization);
2. Name and address of applicant;
3. List of goods and/or services (in English, German or French), indicating the International Classification;
4. 1 print (10 x 10 cm), not required for ordinary word marks;
5. Priority document (if any); legal term for filing: three months after application.

For renewal: no documents are required.

For assignment:
1. Assignment deed;
2. Power of attorney signed by the assignee (without legalization).

Examination Procedure

Examination: as to inherent registrability.

Observations: anyone may file written observations against a trademark application, which are based in particular on absolute obstacles against the registrability. Oppositions ground are not allowed. A natural or legal person filing observations is not a party in the proceeding. The Patent Office is obliged to inform him about the results of the observations. The observations may be filed anytime until the trademark is registered. 

Amendment of application: permissible only for restrictions. 

Corrections: possible.

Disclaimers: not available.

 Letters of consent: are accepted.  

Publication: applications are laid open to public inspection in the electronic Czech Patent Office Gazette. 

Oppositions: may be lodged within the period of three months from the date of publication by the following authorized person: (a) the owner or the applicant of an identical or confusingly similar trademark with an earlier priority right in cases where the trademark is registered or filed for the same or similar goods or services; (b) the owner of an earlier identical or confusingly similar trademark with good name registered for the goods or services which are not identical or similar; (c) the owner of an identical or confusingly similar denomination that has acquired distinctiveness in the Czech Republic in the last two years before the filing date for identical or similar goods or services to this owner; (d) the natural person whose forename or surname or representation, or pseudonym, are identical or confusingly similar with the published denomination in cases where the registration of this denomination may infringe the rights of a person's protection; (e) the owner of earlier rights from another industrial property in cases where his title right is identical or confusingly similar with the published denomination; (f) anyone to whom belongs the rights of an author's work; (g) the owner of earlier identical or confusingly similar European Union Trademark registered for identical or similar goods and services; (h) the owner of "agent trademark" registered in another country of the Paris Convention or WTO filed without the consent of the right owner.

Protection

Granting: if there is no obstacle to the registration, the Patent Office will register the trademark and then inform the applicant. Disclaimer is not allowed. 

Delivery of document: the Patent Office issues the certificate of registration on the Register. The registration will then be announced in the Gazette within six months from the registration. 

Beginning of protection: as from the date of the application. 

Duration – extension: ten years; always renewable for further periods of ten years.

User rights: registration confers property rights. 

Obligation to use: use is obligatory within any five-year period. The public offer for use of the trademark through the press has the validity of usage.

Marking of registered goods: not compulsory. 

Text of marking: “ochranna znamka c….”. 

Renewal: possible indefinitely for periods of ten years. The application must be filed during the last year of the pending period of protection. 

Latest term for renewal: within six months following the expiry of the protection period.

Changes in the list of goods and/or services: extension not possible. 

Modification of the mark: not possible. 

Assignment: possible, must be registered to be effective against third parties. 

Licenses: possible, must be registered to be effective against third parties. Requirements: license deed, power of attorney.

Modification of Protection after Registration

Cancellation with ex nunc effect: the Patent Office shall cancel (a) the trademark which has not been used for non-consecutive period of five years. The use within three months prior to the filing of the cancellation action is irrelevant if the trademark owner knew about the possible cancellation action; (b) a trademark which became generic for the goods and services with respect to the owner’s activity or lack of activity; (c) a trademark which after its registration can be misleading for the public in particular with respect to quality or geographical origin of the goods or services; (d) a trademark which use is unfair competition. The Patent Office shall cancel this trademark on the basis of a court decision. The deadline is six months from the force of law of the court decision. 

Cancellation with ex tunc effect: the Patent Office shall cancel on request of a third party a trademark registered in violation of the Trademark Law. However, a trademark registered in violation of the Trademark Law with respect to the lack of distinctiveness, general and common denomination and words shall not be cancelled if the owner proves acquired distinctiveness for the relevant goods and/or services after its registration. Cancellation can also be filed from the opposition grounds.

Registration of invalidated marks: any time. 

Infringements and penalties: penal and civil actions can be brought against the infringer. The court decides upon the request for the preliminary measure within seven days at the latest from the filing date of the request. The security must be paid simultaneously with the request.

Reexamination of the final decision of the Patent Office: possible before the Municipal Court in Prague. Cassation complaint against the decision of the Municipal Court is possible with the Supreme Administrative Court.

European Union Trademark (EUTM) Conversion

Filing requirements for the conversion of an EUTM trademark application into a national application in the Czech Republic:
1. Original conversion application;
2. Translation of the conversion application and attachments into Czech;
3. Reference to an address of delivery in the Czech Republic;
4. Wording of a trademark, if not a word mark – 5 copies;
5. Payment of the official fees.

Time limit: two months from the invitation of the Industrial Property Office to submit the requested documents. 

Note: filing date or priority date of the converted application is granted. 

Conversion of registered EUTMs: requires the same formalities. Conversions are then recorded in the Bulletin.