Act No. 286 / 2018 Coll.
Act amending Act No. 441 / 2003 Coll., on Trade Marks and on Amendment to Act No. 6 / 2002 Coll., on Courts, Judgments, Addresses and Government Administration of Courts and amending certain other laws (Law on Courts and Courts), as amended, (Law on Trade Marks), as amended, Act No. 221 / 2006 Coll., on the Enforcement of Industrial Property Rights and on the Amendment to Industrial Property Rights (Act on the Enforcement of Industrial Property Rights), and Act No. 634 / 2004 Coll., on Administrative Charges, as amended
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286
THE LAW
of 15 November 2018
amending Act No. 441 / 2003 Coll., on Trade Marks and Amendment to Act No. 6 / 2002 Coll., on Courts, Judges, Addresses and Government Administration of Courts and amending certain other laws (Law on Courts and Courts), as amended, (Law on Trade Marks), as amended, Act No. 221 / 2006 Coll., on the Enforcement of Industrial Property Rights and on the Amendment to Industrial Property Rights (Law on the Enforcement of Industrial Property Rights), and Act No. 634 / 2004 Coll., on Administrative Charges, as amended
Parliament has decided on this law of the Czech Republic:
Amendment to the Trade Marks Act
Act No. 441 / 2003 Coll., on Trade Marks and Amendment to Act No. 6 / 2002 Coll., on Courts, Judgments, Addresses and Government Administration of Courts and on the Amendment to Certain Other Laws (Law on Courts and Judges), as amended, (Act on Trade Marks), as amended by Act No. 501 / 2004 Coll., Act No. 221 / 2006 Coll., Act No. 296 / 2007 Coll., Act No. 303 / 2013 Coll., Act No. 183 / 2017 Coll., and Act No. 196 / 2017 Coll., is amended as follows:
1. Paragraph 1, including footnote 16, reads as follows:
This law implements the relevant provisions of the European Union16) and regulates trade marks.
16) Directive (EU) 2015 / 2436 of the European Parliament and of the Council of 16 December 2015 amending the laws of the Member States relating to trade marks (recast). ';
2. After Paragraph 1, the following Section 1a is inserted:
Markings which may constitute a trade mark
A trade mark may, under the conditions laid down by this law, be any indication, in particular the words, including personal names, colour, drawings, letters, figures, the shape of the product or its packaging or sounds, if that marking is eligible
(a) to distinguish the goods or services of one person from those of another person; and
(b) be expressed in the Register of Trade Marks (hereinafter referred to as "the Register") in such a way as to enable the competent authorities and the public to identify clearly and accurately the subject-matter of the protection granted to the proprietor of the trade mark. "
3. in Article 2 (a), the words "trade marks (the register)" shall be deleted;
4. In Article 2 (b), the words "the World Organisation 'shall be inserted after the words" the International Bureau', the word "ownership 'shall be replaced by the word" ownership' 14) and the words "(the Madrid Agreement) shall be inserted after the words" trade marks'.
5. in Article 2 (c), including footnote 2:
"(c) registered in accordance with Regulation (EU) No 1093 / 2010 of the European Parliament and of the Council (hereinafter referred to as" Regulation of the European Parliament and of the Council ") in a register maintained by the European Union Intellectual Property Office (hereinafter referred to as" the European Union trade mark "),
(2) Regulation (EU) 2017 / 1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark. ';
6. In Article 2 (d), the word "mental 'is replaced by" mental'.
7. in § 3 (a) of the introductory part of the provision, the word "date" is replaced by "date."
8. in Article 3 (a) (3), "the Community" is replaced by "the European Union."
9. In Article 3 (b), the word "Community 'is replaced by the words" European Union', the words "34 of the Council Regulation (2) 'are replaced by the words" 39 and 40 of the Regulation of the European Parliament and of the Council' and the words "(hereinafter referred to as seniority) 'are inserted after the words" to the rights of an earlier trade mark'.
10. in Article 3 (d), the words "before the date" shall be replaced by the words "before the date" and the word "date" shall be replaced by the words "date."
11. In the heading above the sign § 4, the word "refusal 'is replaced by" rejection'.
12. in Article 4 (a), "§ 1" is replaced by "§ 1a."
13. in Article 4 (c), the word "service" is replaced by the word "may serve" and the word "services" is replaced by the word "services."
14. in Article 4 (d), the words "and established" shall be inserted after the word "honest."
15. in Article 4 (e):
"(e) which consists exclusively of the shape or other characteristic which results from the nature of the product itself or which is necessary for the achievement of the technical result or which gives the product a significant value of use,"
16. in Paragraph 4 (h):
"(h) which contains or reproduces in its essential elements an earlier name for a plant variety registered in accordance with the legislation of the Czech Republic or with the regulation of the European Union or with international treaties to which the Czech Republic or the European Union is a party, which provide protection for plant variety rights and which concern varieties of the same or closely related species,";
17. in Article 4 (j), the word "special" shall be deleted;
18. in § 4 (l):
"(l) whose use is contrary to the provisions of the legislation of the Czech Republic or the regulation of the European Union or to the obligations arising for the Czech Republic under international agreements to which the Czech Republic or the European Union is a party, in particular as regards the protection of designations of origin and geographical indications, traditional terms for wine and traditional specialities guaranteed."
19. in Article 4, point (m) is deleted;
20. Article 6 shall be deleted;
21. in Article 7 (1) and (2):
"(1) The trade mark applied for shall not be entered in the Register on the basis of objections to registration of the trade mark submitted to the Office (hereinafter referred to as" the opposition ').
(a) the proprietor of an earlier trade mark which is identical to the mark applied for and which is protected for the same goods or services for which the mark applied for is to be registered;
(b) the proprietor of an earlier trade mark where there is a likelihood of confusion on the part of the public due to conformity or similarity with the earlier trade mark and the conformity or similarity of the goods or services covered by the trade mark applied for; the likelihood of confusion is also considered to be a likelihood of association with an earlier trade mark,
(c) the proprietor of an earlier trade mark which is identical to or similar to the trade mark applied for, whether or not the trade mark applied for is to be registered for the same, similar or similar goods or services for which the earlier trade mark is protected, and is an earlier trade mark which has a good name in the Czech Republic and, in the case of a European Union trade mark, in the territory of the European Union, and the use of the trade mark applied for without due cause would unduly benefit from or be prejudiced by the distinctive character or the reputation of the earlier trade mark,
(d) the proprietor of the trade mark, where the trade mark application (the application) has been lodged by a representative of the proprietor of the trade mark in his own name and without the consent of that proprietor, unless the representative has duly justified his actions;
(e) a non-registered sign or any other sign used in the course of trade which, before the date of filing of the application, has acquired rights to an unregistered or other sign used in the course of trade, provided that there is a likelihood of confusion on the part of the public due to the conformity or similarity of the registered sign with the unregistered or other sign and the conformity or similarity of the goods or services to which those marks relate; the likelihood of confusion is also considered to be the likelihood of association,
(f) a natural person whose right to the protection of a person, in particular the right to his or her name, the right to his or her own form and the protection of manifestations of a personal nature, may be affected by the mark applied for or, where appropriate, by the person authorised to exercise those rights,
(g) by the person who belongs to the copyright, where the work of the author may be affected by the use of the sign applied for; or
(h) owner of an earlier right of other industrial property, where industrial property rights may be affected by the use of the mark applied for.
(2) The applicant for a trade mark referred to in Article 3 (c) and the applicant for registration of another industrial property right referred to in paragraph 1 (h) may also lodge objections if that right is registered. "
22. in § 8 (2) of the introductory part of the provision, the words "§ 10 and 11" are replaced by the words "§ 10 to 11."
23. in Article 8 (2) (c):
"(c) a sign identical to or similar to the trade mark, whether used for identical, similar or non-similar goods or services for which the trade mark is protected, and a trade mark having a good name in the Czech Republic, and its use without due cause, would unduly benefit from or be detrimental to the distinctive character or the reputation of the trade mark."
24. In Article 8, at the end of paragraph 3, the dot is replaced by a comma and the following points (e) and (f) are added:
"(e) the use of a designation as the name of a legal person or a commercial firm or as part of the name of a legal person or a commercial firm;
(f) the use of labels in comparative advertising in a manner contrary to other legislation6).
6) For example Article 2980 of the Civil Code, Act No. 40 / 1995 Coll., on the regulation of advertising and amending and supplementing Act No. 468 / 1991 Coll., on the operation of radio and television broadcasting, as amended, as amended. '
25. in Article 8, the following paragraph 4 is inserted after paragraph 3, including footnote 7:
"(4) The proprietor of an earlier registered trade mark shall have the right to prevent the carriage of products from third countries to the Czech Republic in the course of trade without being released for free circulation there, provided that such products, including their packaging, are unjustly marked with a trade mark which is identical to or which cannot be distinguished in its essential characteristics from that trade mark. This shall not apply where, in the course of infringement proceedings against a registered trade mark which has been initiated in accordance with the provisions of the directly applicable European Union7), the declarant or the holder of goods provides evidence that the proprietor of that trade mark is not entitled to prohibit the marketing of the products in question in the country of final destination.
7) Regulation (EU) No 608 / 2013 of the European Parliament and of the Council of 12 June 2013 on the enforcement of intellectual property rights by the customs authorities and repealing Council Regulation (EC) No 1383 / 2003. '
Paragraph 4 shall become paragraph 5.
26th Paragraph 8 (5) reads:
"(5) Where a trade mark has been registered in the name of the representative of the proprietor of the trade mark without the consent of that proprietor, the proprietor shall have the right to prohibit the use of the trade mark by that person, unless he has duly justified his actions. ';
27. The following Section 8a is inserted after Section 8:
Where there is a risk that the packaging, labels, labels, security features or devices or devices evidencing authenticity or any other means on which the trade mark is affixed could be used for goods or services and such use would constitute an infringement of the rights of the proprietor of the trade mark pursuant to Article 8 (2) and (3), the proprietor of the trade mark shall have the right to prohibit the trade in:
(a) place a mark identical to, or similar to, the trade mark on the packaging, labels, labels, security features or devices or devices which attest authenticity or any other means on which the trade mark may be affixed;
(b) to offer on the market or place on the market or store for such purposes, or to import or export packaging, labels, labels, security features or devices or devices or devices proving authenticity or any other means on which the trade mark may be affixed. ";
28. In Article 9, the words "printed or electronic 'shall be inserted after the words" works'; the words "goods' shall be replaced by the words" products'; the words "were 'shall be inserted immediately; in the case of printed forms' shall be inserted a comma.
29. in Paragraph 10 (1):
"(1) Where use is in accordance with commercial practices and the principles of fair trade, the proprietor of the trade mark shall not be entitled to prohibit third parties from using in the course of trade:
(a) their name and surname or address in the case of a natural person;
(b) indications or indications which do not have distinctive character or which relate to the type, quality, quantity, purpose, value, geographical origin, time of manufacture of the product or service or other characteristics thereof;
(c) a trade mark for the purpose of identifying goods or services as goods or services originating from or referring to the proprietor of that trade mark as goods or services of that proprietor, in particular where the use of that trade mark is necessary to indicate the intended purpose of the product or service, in particular for accessories or spare parts. "
30. The following Sections 10a and 10b are inserted after Section 10, including footnote 8:
(1) The proprietor of a trade mark is entitled to seek pursuant to another legislature8) that the court prohibit the use of a mark only to the extent that his rights at the time when the action was brought cannot be revoked in accordance with Paragraph 31 (1) (a).
(2) Where a trade mark is registered for at least five years at the date of the application, the proprietor of the trade mark shall, at the defendant's request, provide proof that, during the period of five years preceding the date of the application, the trade mark has been properly used in accordance with Paragraph 13 for the goods or services for which it is registered and on which the application is based, or evidence of the existence of proper reasons for not using it.
(1) The proprietor of an earlier trade mark is not entitled to seek pursuant to another legislation (8) to prohibit the use of a later trade mark if such later trade mark would not be declared invalid pursuant to § 12 (1) or (3) or § 32b (2) or (3).
(2) The proprietor of an earlier trade mark is not entitled to apply under another legislation (8) to the court to prohibit the use of a later trade mark of the European Union if that later trade mark of the European Union would not be declared invalid on the basis of Article 60 (1), (3) or (4), Article 61 (1) or (2) or Article 64 (2) of Regulation (EC) No 45 / 2001 of the European Parliament and of the Council.
(3) Where the proprietor of an earlier trade mark is not entitled to request that a court prohibit the use of a later trade mark pursuant to paragraph 1 or 2, the proprietor of the later trade mark concerned shall not be entitled to request that the court prohibit the use of an earlier trade mark, even if that earlier right may no longer be invoked against a later trade mark.
8) For example, Act No. 221 / 2006 Coll., on the Enforcement of Industrial Property Rights and on the Amendment of the Industrial Property Protection Act (Industrial Property Rights Enforcement Act), as amended by Act No. 286 / 2018 Coll. '
31. in Article 11, paragraph 1 is deleted;
Paragraphs 2 and 3 shall be renumbered paragraphs 1 and 2.
32. in Article 11 (1), the words "the European Communities" shall be replaced by the words "the European Union";
33.Paragraph 11 (2) reads as follows:
"(2) Paragraph 1 shall not apply where the proprietor of a trade mark has reasonable grounds to prohibit the placing on the market of products, in particular where there has been a change or deterioration in the state of the products after they have been placed on the market. ';
34. in Paragraph 12 (1):
"(1) The proprietor of an earlier trade mark who, for five consecutive years, has knowingly suffered the use of a later trade mark, may no longer, on the basis of that earlier trade mark, submit an application for the declaration of a later identical or similar trade mark as invalid in respect of the goods or services for which that later trade mark was used, unless the application for a later trade mark was filed in good faith. ';
35. In Article 12, the following paragraph 3 is added:
"(3) The user of the earlier mark referred to in Article 7 (1) (e), who, for 5 consecutive years, has knowingly suffered the use of a later mark, cannot, on the basis of his mark, submit a proposal to declare a later identical or similar mark invalid in respect of the goods or services for which the latter mark has been used unless the application for the later mark is filed in good faith."
36. in Paragraph 13 (l):
"(1) Where, within 5 years of the date of registration of the trade mark, the proprietor has not started to use the trade mark properly for the goods or services for which it is registered, or where such use has been interrupted for at least a continuous period of 5 years, there shall be consequences pursuant to Sections 10a, 26a, 31 or 32c, unless there are proper reasons for non-use. For international trade marks marked with the Czech Republic, the date of registration shall be deemed to be the date on which the refusal of protection under the Madrid Agreement or the Protocol to the Madrid Agreement can no longer be notified. Where a refusal of protection has been notified on the grounds set out in Paragraph 4 or objections have been brought on the grounds set out in Paragraph 7, the period of five years shall be calculated from the date on which the decision in those proceedings became final and cannot be challenged in court. The proper use of the European Union trade mark shall be assessed in accordance with Article 18 of the Regulation of the European Parliament and of the Council. ';
37. in Paragraph 13 (2), the words "whether a trade mark is also registered as another trade mark of the same proprietor" shall be added at the end of the text of point (a).
38. in Article 13 (3), the words "under a licence agreement (Paragraph 18)" shall be replaced by the words "with the consent of the proprietor of the trade mark" and the words "and certification" shall be inserted after the word "collective";
39. Paragraph 14 shall be deleted, including the title.
40. In Paragraph 15 (1), the word "undertaking 'is replaced by" business establishment'.
41. in Article 15 (2), the words "special legislation.6)" shall be replaced by "other legislation10)."
Footnote 10:
"10) For example, § 1670 et seq. of the Civil Code. '.
42.Paragraph 15 (3) reads as follows:
"(3) The transfer of a trade mark shall take effect by registration. Any Contracting Party may apply for registration of a transfer. ';
43. In Article 15, the following paragraphs 4 to 7 are inserted after paragraph 3:
"(4) The transfer of a trade mark shall be effective against third parties by registration. The change-over may be applied for by the successor of the original owner or another beneficiary. The proprietor of the trade mark may take action against the Office concerning the treatment of the trade mark on receipt of the application for registration of the transfer of rights to the trade mark.
(5) The facts referred to in paragraphs 3 and 4 The Office shall register within 1 month from the date on which the Office receives all the supporting documents necessary for the implementation of the operation.
(6) The application for registration of a trade mark transfer or transfer shall contain:
(a) details of the identity of the earlier proprietor of the trade mark;
(b) details of the identity of the proprietor of the trade mark; and
(c) an indication of whether the trade mark is transferred or transferred for all the goods or services for which it is registered or only for some of them listed in the order of classes of international classification (9), together with the appropriate class number.
(7) The application for a transfer of a trade mark shall be accompanied by a transfer document or an extract thereof, or, where appropriate, by another document proving the change of the proprietor of the trade mark. When the transfer is made, the application shall be accompanied by proof of the transfer of the trade mark. ';
Paragraph 4 shall become paragraph 8.
44. in Article 15 (8), the text "to 3" is replaced by "to 7."
45. Paragraph 16, including footnote 17, reads as follows:
(1) The proprietor of a trade mark registered in the Union country of the Paris Convention (3) or in a State which is a member of the World Trade Organisation (17) has the right to lodge before a court an application to determine the right to indicate the change of the proprietor of the trade mark if the trade mark has been registered in the name of a representative without the consent of the proprietor of the trade mark.
(2) Upon final decision of the Court, the Office shall, upon request, indicate the change of the proprietor of the trade mark in the Register and publish this fact in the Bulletin of the Industrial Property Office ("the Bulletin '). The request to indicate the change of the proprietor of the trade mark shall be accompanied by a final decision by the court.
17) Agreement establishing the World Trade Organisation (WTO), published under No 191 / 1995 Coll. '
46. In Article 17 (1), the words "or other rights in rem 'shall be inserted after the word" rights' and the word "special 'shall be replaced by" other'.
47.Paragraph 17 (2) reads as follows:
"(2) The facts referred to in paragraph 1 shall be entered in the Register upon request by the Office within a period of 1 month from the date on which the Office receives all the supporting documents necessary for the execution of the operation."
48. In Article 17, the following paragraphs 3 and 4 are inserted after paragraph 2:
"(3) The application for registration of other rights shall contain:
(a) details of the identity of the proprietor of the trade mark; and
(b) details of the identity of the authorised person from other rights.
(4) An application for registration of a trade mark lien shall be accompanied by a lien, a judgment of the court or administrative authority; the application for enforcement or execution shall be accompanied by a judgment of the court, administrative authority or order of execution. ';
Paragraph 3 shall become paragraph 5.
49. In Article 17 (5), "special 'is replaced by" other'.
50. In Article 17, paragraph 6 is added:
"(6) The provisions of paragraphs 1 to 5 shall apply mutatis mutandis to the application.";
51. in Paragraph 18 (1), the words "special legislation (7)" shall be replaced by the words "other legislation (18)," the word "exclusive" shall be replaced by "exclusive" and the word "non-exclusive" shall be replaced by "non-exclusive."
Footnote 18 reads:
"18) § 2358 to 2370 of the Civil Code. '
52. in Paragraph 18, the following paragraph 3 is inserted after paragraph 2:
"(3) The licensee shall be entitled to intervene in infringement proceedings initiated by the proprietor of a trade mark under another law in order to claim compensation for the damage suffered. ';
Paragraph 3 shall become paragraph 4.
53.In Paragraph 18 (4), the words "Licensing Agreement" are replaced by "Licences" and the second sentence is deleted.
54. In Paragraph 18, paragraphs 5 to 8 are added:
"(5) The application for registration of a licence shall contain:
(a) details of the identity of the licensor;
(b) details of the identity of the licensee;
(c) the description of the goods or services to which the licence relates or the indication that the licence relates to all the goods or services; and
(d) an indication of whether the licence is exclusive or non-exclusive.
(6) Applications for registration of a licence shall be accompanied by a licence contract or, where appropriate, an extract thereof or any other document proving the granting of the licence.
(7) An application for an amendment to the registration of a licence or, where appropriate, to the registration of the termination of a licence may be made by either Contracting Party.
(8) The provisions of paragraphs 1 to 7 shall apply mutatis mutandis to the licence for the application. "
55. in Paragraph 18a (1), the words "co-ownership rules" are replaced by the words "other legislation19";
Footnote 19:
"19) For example, § 1115 et seq. of the Civil Code, § 32 of Act No. 90 / 2012 Coll., on Commercial Companies and Cooperatives (Act on Commercial Corporations)."
56. in Paragraph 18a (3), the words "pursuant to Paragraph 18" shall be inserted after the words "licensing agreements."
57. in Paragraph 18a, the following paragraph 5 is added:
"(5) The provisions of paragraphs 1 to 4 shall apply mutatis mutandis to applications submitted to several applicants. ';
58. Paragraph 19, including the title, reads:
Application
(1) The registration of a trade mark is sought by application to the Office; Each application may cover only one trade mark.
(2) The application shall contain:
(a) details of the applicant's identity;
(b) a list of the goods or services for which registration of the trade mark is sought; and
(c) the text, layout or other expression of the mark applied for which complies with the requirements laid down in Article 1a (b).
(3) If the applicant is represented, the application shall contain details of the representative's identity and shall be accompanied by a document of representation.
(4) Where the applicant exercises the right of priority under Paragraph 20, he shall indicate in the application the date of filing of the application from which he derives the right of priority and the State where the application was lodged. If the applicant exercises the right of priority from several applications, he shall at the same time indicate the right of priority for each product or service from which he applies.
(5) In the application, the applicant shall indicate the type of trade mark whose registration he requests. The definition of the different types of trade marks, including the manner in which they are expressed, is set out in Annex 1 to this law.
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Regulation Information
| Citation | Act No. 286 / 2018 Coll., amending Act No. 441 / 2003 Coll., on Trade Marks and Amendment to Act No. 6 / 2002 Coll., on Courts, Judgments, Addresses and Government Administration of Courts and amending certain other laws (Law on Courts and Courts), as amended, (Law on Trade Marks), as amended, Act No. 221 / 2006 Coll., on the Enforcement of Industrial Property Rights and on the Amendment to Industrial Property Rights (Law on the Enforcement of Industrial Property Rights), and Act No. 634 / 2004 Coll., on Administrative Charges, as amended |
|---|---|
| Regulation Type | Law |
| Author | - |
| Collection | Code of Laws |
| Date of Promulgation | 13.12.2018 |
|---|---|
| Effective from | 01.01.2019 |
| Effective until | - |
| Status | Valid |
The regulation text is for informational purposes only.
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