10 May 2018

Scent trademarks and other news

A major amendment to the Act on Trademarks is currently being debated, with the planned effective date on 1 January 2019. If passed, the amendment will fundamentally change the system of registering trademarks in the Czech Republic. The amendment brings a wide range of novelties: for instance, there will be no need for a registered trademark to be represented graphically, and the Industrial Property Office will no longer automatically refuse to register trademarks identical with previously registered trademarks.

Viktor Dušek
Ondřej Vykoukal

The present definition of a trademark stipulates that any trademark must be capable of being represented graphically; indications that cannot be expressed graphically shall not be registered by the office. Starting from next year, however, this should be possible. As the explanatory report to the draft amendment states: “The new definition does not limit the admissible means of representation to graphical or visual ones but also makes it possible to register trademarks that are capable of being represented by any technological means available.” The choice of the technological means to represent the trademark is not limited by the amendment and is left fully to those applying to register the trademark.

The option to register the traditional verbal, graphical or combined trademark, of course, remains unchanged. However, it will now be possible to register a 3D trademark too, as well as a sound, motion, audio-visual or even holographic trademark. Such trademarks will typically be represented in JPEG, MP3 or MP4 files. Even scent or taste trademarks will be possible, even though their representation will be somewhat problematic. Interestingly, a scent (olfactory) trademark had already been registered: the smell of freshly cut grass for tennis balls. Although this was not a Czech or European trademark, there is clearly a way to represent and register a scent trademark.

Another fundamental change concerns the refusal to register an indication which is identical to a trademark previously registered for the same goods or services. At present, the procedure is that if someone applies to register a trademark that is identical to a trademark already registered for the same goods or services, the office will simply refuse such an application. Owners of current trademarks do not have to monitor new applications to register identical trademarks, and may simply rely on the office to proceed as appropriate.   

From January 2019, the office will no longer follow this procedure; it will be up to the trademark owners to watch whether a registration of a trademark identical with their trademark has been applied for. If a trademark being applied for is identical to an existing trademark, it may still be prevented from being registered, but only upon the motion by the owner of the previously registered trademark. If the owner of the previously registered trademark does not speak up in time, the office will register the new trademark, even if it is identical with such a previously registered trademark.

Every registered trademark owner thus should monitor the applications for new trademarks on a regular basis, and respond in time if a trademark registration is being applied for that is identical to their trademark.

The amendment contains a number of other, less important changes, such as the trademark owners’ right to prevent transportation of goods from third countries to the Czech Republic, if such goods unlawfully infringe on their trademarks, or a provision explicitly allowing the trademark owner to ban the trademark being used as a name of a company.   

The effective date of all the changes proposed is planned for 1 January 2019. Since the changes are based on the EU directive that has to be transposed in the Czech law by 14 January 2019, we expect that the Czech legislators will endeavour to meet this date

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