Trademarks, industrial designs and patents and their registration

Trademarks

A trademark is one of the legal instruments a business can use to protect its brand. This refers to the registration and recording of a trademark, not a trade name. A trademark marks services or products off from other services and products of the same kind provided or produced by different services providers or manufacturers. Trademarks also make it easier for consumers to navigate the range of services and products available on the market. The basic legislation governing trademarks is provided in Act No. 441/2003 Sb., on trademarks, as amended. A trademark may consist of any sign, particularly words, personal names, colours, drawings, numbers, the shape or packaging of the product or even sounds. This applies provided that the trademark is capable of distinguishing products and services of one person from products and services of other persons and of being published in the trademark register so that everyone is able to determine exactly what the trademark protects.

Trademark registration

Before a trademark is recorded, it must be registered. An application for the registration of a trademark must be in writing and filed with the Industrial Property Office (“IPO”). The filing of a trademark application initiates an administrative procedure for the registration of the trademark in the register. Before recording a trademark, the IPO examines all the legal requirements that an application for the registration of a trademark must meet. The trademark applicant is obliged to pay an administrative fee within one month from the date of filing the application, otherwise the application is deemed not to have been filed.

If the sign is eligible for recording in the register, the trademark application is published in the IPO Official Journal for public observations and oppositions. Oppositions may be submitted within three months from the date of publication of the trademark application. The scope of persons entitled to file oppositions is set out in the Trademark Act.

Trademark recording

Provided that no oppositions have been filed against the sign applied for within the time limit or the IPO has found the oppositions to be unfounded, the IPO records the sign applied for in the register of trademarks under its own unique registration number. On the date of recording the trademark in the register, the owner acquires the exclusive right to designate services or products with this protected sign, or in layman’s terms, to use it for his “trade name”.

A trademark registered in the register of trademarks maintained by the IPO is valid only in the Czech Republic. If the applicant wishes to secure the protection of his trademark in the territory of another state, he must apply for registration of the trademark with the competent authority in that state or file an international application or an application for the territory of the European Union with the European Union Intellectual Property Office.

If the applicant has a permanent residence or registered office in the Czech Republic, he may file an application for registration of the trademark himself. However, if the applicant does not meet the conditions of permanent residence or registered office, he usually has to file the trademark application through a member of the Czech Bar Association (i.e. an attorney) or a member of the Chamber of Patent Attorneys.

Patents

A patent is currently the only form of protection for the results of technical creative activities, i.e. an invention. A patent is granted for an invention that meets the criteria of novelty, inventive step and industrial application. The legal regulation of patents is provided in Act No. 527/1990 Sb., on inventions and rationalisation proposals, as amended.

Registration of a patent in the patent register

The registration of a patent in the patent register is preceded by a rather demanding application process. A patent application is also filed with the IPO and consists of a patent request and annexes describing the invention. Following the filing, the patent application is subject to a preliminary examination. At the same time, the filing of the application gives rise to the applicant’s right of priority, which is the most important right arising from filing the application as it guarantees the applicant priority to exercise the right to the patent against applicants who file an application with identical content later.

Ideally, unless the application is refused or the procedure is discontinued, the application is published in the IPO Official Journal after 18 months from the date of acquiring the right of priority. Once a patent application is published, the public is allowed to consult its content and make extracts or copies of it. This is also the time when anyone may submit observations on the patentability of the invention. These observations must be substantiated and accompanied by evidence. However, the person who has submitted observations does not become a party to the patent application procedure and is not even informed of how the IPO has dealt with the observations. The IPO always notifies only the applicant of the observations.

Once the patent application meets all the requirements, the IPO grants patent protection to the invention and nothing prevents the patent from being registered in the patent register. The patent register is maintained by the IPO and contains the relevant data on patent applications and granted patents.

Industrial designs

Industrial design protection is primarily used to protect designer products. Industrial designs are the results of creative activities, where technical solutions play almost no role compared to inventions. An industrial design should be a useful object that primarily attracts the consumer and should thus be perceived positively by the customer. The legal protection of an industrial design serves mainly as a defence against competitors copying and selling the items embodying the industrial design without permission. The legal regulation is provided in Act No. 207/2000 Sb., on the protection of industrial designs, as amended.

Industrial design registration

Before an industrial design is registered, an industrial design application in Czech must be filed with the IPO. The industrial design application must meet all the requirements stipulated by the law, in particular, it must contain a request for registration of an industrial design, name of the industrial design, identification of the product to which the industrial design relates or identification of the originator of the industrial design. Every application must include a representation of the industrial design, ideally from all angles.

After the applicant pays the application fees, the IPO examines the elements of the industrial design application. If the subject of the application meets all the requirements, the industrial design is registered in the register of industrial designs without further delay. If the industrial design application contains deficiencies, the IPO issues an examination report and the applicant must remove or refute the deficiencies within a specified time limit, otherwise the industrial design registration procedure is at risk of being discontinued. Upon the registration of the industrial design in the register, the owner obtains a certificate of the industrial design’s registration.

Patent Office or Industrial Property Office

The Industrial Property Office (“IPO”), often inaccurately referred to by the general public as the “Patent Office”, is the central government authority for the protection of industrial property in the Czech Republic. The term “Patent Office” is inaccurate because the activities of the IPO do not consist only in granting patents to protect inventions but also in providing industrial property protection to industrial designs and utility models, topographies of semiconductor products, trademarks and appellations of origin.

The main task of the IPO is, to the extent granted by law, to issue decisions confirming that a given subject-matter of industrial property meets the conditions for protection. The IPO is also entitled to revoke industrial protection of a certain product or service.

Are you at your wits’ end when dealing with the IPO?

The process of obtaining industrial property protection for a specific item is not a simple task. Individual applications are subject to a number of formal requirements and contain a lot of annexes to substantiate the applicant’s identification and the description of the item (visual records, technical descriptions, drawings, etc.) for which protection is sought. If the applicant has a permanent residence or a registered office in the Czech Republic, nothing under the law prevents him from filing an application for protection of a specific item himself. If the applicant does not meet the conditions under the previous sentence, the application must usually be filed through a member of the Czech Bar Association or the Chamber of Patent Attorneys. Given the complexity of the process of granting industrial property protection, we recommend designating a representative, namely an attorney or a patent attorney, to assist you in dealings with the IPO. Our law firm is ready to guide you through the entire application process and represent you in your dealings with the IPO.

What situations do we typically handle for our clients regarding trademarks, industrial designs and patents?

• How to register a trademark
• Who can go to the Patent Office
• What is the classification of trademarks?
• What can be registered as a trademark?
• Price/administrative fee for filing a trademark registration
• Filing an opposition or observation on a trademark registration application
• Extension of the trademark’s validity to other countries
• Trademark infringement
• Purchase of the right to use a third-party trademark
• Criteria for obtaining a patent
• How to file a patent
• Filing a patent application and annexes clarifying the invention
• Price of patent applications
• Exercise of the right of priority for patents
• Extracts and copies of patent applications
• Industrial design applications
• Dealings with the Industrial Property Office
• Representation before the Patent Office
• Trademark registration