In conducting business on the internet, the wording of the domain name is often of greatest significance for distinguishing individual entrepreneurs and the goods and services they offer. Nevertheless, even in the area of internet business, the importance of trade marks cannot be entirely overlooked, the primary purpose of which is precisely to distinguish the goods and services of entrepreneurs. From practice, it is possible to mention, for example, frequent cases where, in contextual advertising systems, a designation used earlier and lawfully by another trader is used by competitors as a keyword. In such cases, the protection of the trader concerned is easiest if he has a registered trade mark for the designation in question.

At the very outset, it may be stated that any designation capable of graphic representation may be registered as a trade mark under the conditions laid down in the Trade Marks Act (Act No. 441/2003 Coll., as amended). In the territory of the Czech Republic, in addition to national trade marks which are entered in the register of trade marks maintained by the Industrial Property Office, international trade marks and also Community trade marks entered in the register maintained by the Office for Harmonisation in the Internal Market enjoy protection. In addition to a national trade mark, which has effects only in the Czech Republic, a trader may thus also register international trade marks and Community trade marks (having effects throughout the territory of the EC).

A trade mark may primarily be a word trade mark or a combined trade mark (consisting of graphic design of text or a depiction and text – for example, a company logo). Registration of a word and combined trade mark cannot be carried out at once (that is, by one application and for one administrative fee). In the case of an interest in registering both a word trade mark and a logo (as a combined trade mark), it is therefore necessary to file multiple trade mark applications. In this connection, we note that a word trade mark logically enjoys “broader” protection than a combined trade mark, since in the case of a combined trade mark the graphic representation is protected as a whole, and any confusability of another designation with the registered mark is thus assessed in relation to this graphic whole.

The legal issues associated with trade marks are relatively complex, and it can therefore always be recommended to entrust them to a specialist – a lawyer or a patent attorney. In general, it may be stated that before filing an application for registration of a particular designation as a trade mark, it is always advisable to conduct a search in relation to existing trade marks so as to avoid rejection of the application or part thereof on grounds of confusability with an already registered designation. In the case of registration of a new national trade mark, it is necessary, in terms of possible confusability, to examine also the wording of international trade marks (registered with effects for the Czech Republic) and Community trade marks. Furthermore, it is advisable, before filing an application for registration, to assess at least in general terms the so-called distinctive character of the designation being filed, that is, whether the designation being filed is not so general in relation to the classes of goods and services being filed that the relevant office will not carry out its registration for this reason (in the case of a combined designation, there is less risk).

Specifically, we shall address the procedure for filing applications for registration of trade marks in the register of trade marks maintained by the Industrial Property Office, that is, for filing applications for a national trade mark. A national trade mark has effects only in the territory of the Czech Republic. In the actual preparation of the application, the applicant must select the individual classes of goods and services for which the trade mark is to be registered, according to the so-called Nice Classification of goods and services. Subsequently, it is advisable to further specify the classes of goods and services thus selected by a specific list of goods and services. An overview of the individual classes of goods and services, including a more detailed specification of goods and services in the individual classes, can be found in documents published by the Industrial Property Office on its website.

In terms of the selection of classes of services and goods for which the trade mark is to be registered, it is worth mentioning the fact that after filing a trade mark application (and subsequently not even after its possible registration in the register of trade marks), the application or trade mark cannot be extended to further classes of services and goods. On the other hand, however, it is possible to narrow the application, which most frequently occurs by reason of a conflict with another already registered designation of a third party. In view of the facts stated above, it is therefore advisable, before filing the application, to give sufficient consideration to all anticipated alternatives for the use of the designation being filed. The amount of the (filing) administrative fee for a national trade mark for 3 classes of goods and services is CZK 5,000, and for each additional class of goods and services a further CZK 500.

After filing an application for registration of a trade mark which satisfies all formal requirements, the Industrial Property Office examines (within the framework of the so-called examination proceedings) whether the designation being filed satisfies the statutory requirements necessary for registration of the designation being filed as a trade mark in the register of trade marks. The most frequent deficiency which the Industrial Property Office finds at this stage is precisely the insufficient distinctive character of the designation being filed.

In the event of a positive outcome of the examination proceedings, the Industrial Property Office will proceed to publish the application. From the moment of publication of the trade mark application, all third parties may then file objections against the registration of the trade mark within a period of 3 months. In the event that such an objection is filed by a third party, so-called opposition proceedings subsequently take place. If no objections have been filed or if objections have been rejected by a final decision, the Industrial Property Office will enter the trade mark in the register and issue to the owner of the trade mark a certificate of registration of the trade mark in the register.

This text was translated from Czech to English using an AI translator.