What is a trademark?
Act No. 441/2003 Coll. on trademarks states that “a trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, colours, designs,
letters, numerals, the shape of goods or their packaging, provided that such sign is capable of
distinguishing goods or services of one undertaking from those of another undertaking.”
The trademark must therefore comply with the standard defined by the law (we’ll discuss the possibilities one at a time later), while being distinctive. It’s the distinctiveness that separates it from the competition. Let’s illustrate with an example. Our company couldn’t register the “Attorney” trademark, as such a term isn’t distinctive enough. However, referring to our firm as “Your Attorneys Online” will clearly separate us from the competition.
Tip: When launching your business, remember to enter into a non-disclosure agreement (also known as a confidentiality agreement, secrecy agreement or proprietary information agreement) to protect your know-how.
What can you protect with a trademark?
A trademark is a kind of intellectual property and exists in several forms:
- verbal – one or several words or a combination of words and a graphic illustration,
- graphic – for example, brand logos,
- spatial (three-dimensional) – for instance, the well-known shape of a Coca-Cola bottle, or the Toblerone chocolate packaging,
- combined – a combination of all the above, or of, e.g., only a logo with a text,
- colour – here, clearly provable distinctiveness is necessary. While this may be difficult to attain, the blue-silver combination of the Redbull brand serves as a successful example.
Tip: Read our article about protecting a musical piece.
Your Attorneys Online advise:
Trademarks registered for use within the European Union may also come in the form of a sound, smell or hologram. What’s essential, however, is that all the forms we’ve named so far only count as a definition of your brand – the definition becomes a trademark only when registered.
Tip: Watch a video where the founder of Your Attorneys Online, Ondřej Preuss, discusses protecting a brand on the Internet.
4 things to check before you register your trademark in the Czech Republic
- Have you devised a name for your business? Check the Companies Register and the Trade Register to see if someone else is already using it.
- Check the trademarks database to see if your trademark is still available. You’ll need to go through all the records valid in Czechia, i.e., Europe and the world as well.
- You can employ the database search to find a logo or expression that you have in mind.
- Think over selecting a suitable class for your trademark – you can find the classification types on the Industrial Property Office website.
Mistakes are easily overlooked when registering a trademark
A mistake may not manifest itself until you launch the business and the competition starts parasitizing you. Entrust the registration into our hands; we’ll make sure it’s done properly.
Leave trademark registration to professionals
Tip: Are you launching an online business? Read about how to create an e-shop.
How to register a trademark in the Czech Republic
Any physical or legal person may register a trademark. However, a person who neither owns an establishment actually located or headquartered in Czechia, nor has their permanent residence here, must be represented when registering a trademark.
Moreover, it’s only possible to register products or services that are subject to your business, that is, those that have a direct link to the business type specified in your trade licence.
Tip: Naturally, a solicitor or patent attorney may represent you.
The Industrial Property Office handles the registration. You automatically gain the priority right upon handing in the application, which prevents others from registering the same or an interchangeable trademark.
Trademark registration approval process in Czechia
- Examination and check – the office examines all the legal necessities of your application and determines whether it’s possible to register the trademark. In particular, they verify whether or not an identical trademark has already been registered, and whether or not your trademark is misleading. For that purpose, the Czech Industrial Property Office employs a semi-automated trademark processing system, which searches their database according to various criteria (words used in the trademark, graphic sorting, class, the owner of a registered trademark…). If they reach the conclusion that your application doesn’t meet certain criteria, they won’t register it. If you’re unsure, try a combined trademark, where the chance for success is somewhat greater.
- Publishing the application – as the following step, the office publishes the application, so that the public can raise objections or submit remarks within 3 months, which the office considers before issuing a judgement. Naturally, you’re free to comment on the objections, thus possibly disproving them. If a dispute breaks out, a conciliatory solution, where you reach an agreement with the person who raised the objection, may be best. Even so, be aware that this will likely delay the registration, increase its cost and may fail entirely in the end. Don’t underestimate the search, be thorough, and don’t hesitate to turn to experts. We’ll gladly reach an agreement with, e.g., a foreign company on your behalf.
What to bear in mind when registering a trademark in Czechia
- On average, the whole process (from handing in the application to the moment your trademark is registered) takes 5 – 12 months.
- Registering a trademark costs at least 5,000 CZK. When nearing its expiration, you may repeatedly extend its validity by 10 years for an additional fee of 2,500 CZK. You must apply for the prolongation no sooner than 12 months prior to and no later than the expiry date. If you miss this deadline, you can apply for renewing the registration for an increased administration fee of 5,000 CZK.
- For the standard fee of 5,000 CZK, you may register your trademark in 3 classes of products and services. Each additional class costs 500 CZK.
The trademark registered thus is only valid within the Czech Republic. If you’re planning to expand, you can also register European Union or worldwide trademarks.
Tip: In the initial stage of your business, you may find this non-disclosure agreement template useful.
Your Attorneys Online advise: Registering a European Union trademark is incomparably easier than registering separately in each country. It’s valid in all the current E.U. countries as well as in those that might become E.U. members at a later time. You need to apply to EUIPO (European Union Intellectual Property Office). However, their fees are considerably higher: 850 € for one class, 900 € for two, and 150 € for each additional class.
What rights do you gain upon registering a trademark?
As a trademark owner, you gain the right to its exclusive use, i.e., no one else is allowed to use or copy it. Also, you are entitled to use the ® symbol.
A trademark guarantees that no other subject uses an identical or interchangeable trademark for the same or similar products or services.
Tip: However, the competition may well register a similar trademark in another class.
In such a case, you may petition the court to order the product or service withdrawn from the market and claim eventual damages. On the other hand, you may wish to grant another subject the right to use your trademark. You can do so by the means of a licence agreement, in which you can define any and all conditions and charges.
Trademark infringement is a criminal offence punishable with disqualification, asset forfeiture or imprisonment.
Whether you’re planning to register a trademark or fight the competition, an experienced business solicitor will come in handy. Order our package to get hours of consultations to make clear the issues at hand – whether they be drafting or inspecting an agreement, defending in court, or submitting the application for trademark registration.
And last but not least, don’t miss our article on effectively protecting a copyright.