How to trademark

What is a trademark and what does the Trademark Act say?

The Trade Marks Act provides that “a trade mark may be any sign, under the conditions laid down in this Act, in particular words, including personal names, colours, drawings, letters, numerals, the shape of a product or its packaging or sounds, provided that the sign is capable of distinguishing the goods or services of one person from those of another person”.

Thus, the sign must comply with the form set out in the law (we discuss the various options in more detail below) and must meet the so-called distinctiveness requirement. This is what makes you inherently different from your competitors. Let’s demonstrate this with a practical example. If we want to register a trademark for the sign “lawyer”, it will not pass precisely because of the lack of distinctiveness. However, the sign “Affordable Lawyer” already clearly distinguishes us from the competition.

What can you protect with a trademark?

A trademark is a form of intellectual property that can take several forms:

• verbal – a mark either in words only or in combination with a graphic representation,
• pictorial – brand logos are a typical example,
• spatial (three-dimensional) – you will be familiar with the typical shape of a Coca-Cola bottle, but the packaging of a Toblerone chocolate bar, for example, is also a spatial trademark,
• made up of colour – for this mark, a thorough demonstration of distinctiveness is required. This is not always successful, but in practice we can name the blue-silver combination of the Redbull mark.

Until 2018 there was also the possibility of a combination mark, which was a combination of all of the above or, for example, just the logo with text. Today they are referred to as pictorial. However, you can still find them on the register, but only for trademarks registered before 2018.

An available attorney advises: If you register a trademark for the European Union, the possibility of a sound and smell mark or a hologram is added. Most importantly, however, is the fact that everything we have listed above is the definition of your mark. Only after registration does the sign then become a trademark.

4 steps to check before you start registering your trademark

1. Are you at the stage where you’re coming up with a name for your business? Check with the Registrar of Companies and Trades that the name hasn’t already been used by someone before you.
2. Checkthe trade mark database to make sure the name hasn’t already been registered by someone before you. You will need to look at all the marks valid in the Czech Republic (including world and European marks).
3. You can also use the database to search for a logo or phrase you are considering.
4. Choose and think about the right trademark class – you can find the class lists directly on the Industrial Property Office website. Their aim is to make the specification of goods and services as precise as possible).

How is the registration of a Czech trademark carried out?

Any natural or legal person (i.e. anyone) can apply for a trademark. However, a person who does not have a real commercial or industrial establishment, permanent residence or registered office in the Czech Republic must be represented in the trademark proceedings.

It must also be for products or services that are the subject of its business and can thus be linked to the activity that is listed in the trade licence.

Registration is carried out at the Industrial Property Office. By filing the application you already have a right of priority – this prevents others from being able to register the same or confusing trademark.

The trademark register is not only used to verify names, but you can also use it to search for logos or other signs you intend to protect. Checking the trademark database regularly will help you avoid conflicts with existing rights.

What is the trademark registration approval process?

The application review process involves an automated search of the trademark database. This system checks whether the proposed sign is identical or confusing with existing entries in the trademark register.

1. Examination and Control – The Office examines whether the application has all the formal requirements and whether the mark is registrable. In particular, whether the mark is identical to another existing mark or, for example, whether it is deceptive. The Industrial Property Office operates a partially automated trade mark procedure system for this examination. It searches the database according to various criteria (wording, figurative classification, type, owner of the registered trade mark of the product). If the Office finds that an application does not meet certain criteria, it does not register it. In case of uncertainty, we recommend rather combined marks, where there is a greater chance of registration.
2. Publication of the application – at the next stage, the Office will publish the application and the public can file objections and comments within 3 months, which the Office will then decide on. You will of course have the opportunity to comment on the objections and thus refute them. In case of disputes, an amicable solution is also possible, whereby you and the objector enter into an agreement. Even so, you must take into account that the registration may be prolonged, costly or even fail. So don’t underestimate careful research and take expert advice to be sure. We will be happy to prepare such an agreement for you, for example, even with a foreign entity.

A summary of things you need to take into account when registering a trademark:

• The average procedure time (from filing to registration) is in the order of 5 to 12 months.
• Registering a trademark will cost you a minimum of CZK 5,000 and its protection can be extended for 10 years by paying an administrative fee of CZK 2,500. You can apply for renewal no earlier than 12 months before expiry and no later than the expiry date. If you miss the deadline, you have 6 months to apply for renewal. However, this already involves a double administrative fee = CZK 5,000.
• The basic fee allows you to register up to 3 classes of services and products. For each additional class you have to pay an additional fee of 500 CZK.

The trademark is valid only in the Czech Republic. If you plan to expand, it is also possible to register European or international trademarks.

An available attorney advises, “A European trademark is a very simple matter compared to filing in each country separately. It will give you protection both in the current Member States and in those that will join the EU in the future. In this case, the trademark is filed with the EUIPO (EU Intellectual Property Office). Registration is possible in Czech, you just have to count on higher fees = 850 Euro for 1 class, 900 Euro for 2 classes and each additional class with an extra 150 Euro.”

What rights do you have after registering a trademark?

As the owner of the trademark, you have the exclusive right to use it. No one else may use or copy it. You can also use the ® symbol, which represents the registered trademark.

A trademark gives you the guarantee that no one else can use the same or a confusing trademark for the same or similar goods and services without your consent (it is different, however, if a competitor registers the trademark in a completely different class). However, if someone were to use your trademark, you can ask the court to order the withdrawal of their product or service from the market and you will be entitled to compensation for any damages.

It is different if you would like to grant another entity the right to use your trademark of your own free will. This is possible through a license agreement where you set out all the terms and fees.

Infringement of trademark rights is a criminal offence for which the offender can be punished by prohibition of activity, confiscation of the property or imprisonment.

Whether you’re facing trademark registration or battling competition, you’ll need a seasoned business attorney. As part of the package, you’ll get hours of consultation that you can use for whatever it is that ‘ s burning your heart – whether it’s drafting or reviewing a contract, representing you in court, or even filing a trademark application.

Be sure to also read our article on effective copyright protection.

Summary

A trademark is a sign that distinguishes your products or services from your competitors and is protected by trademark law. It can take various forms, such as word, image, space or colour. The process of registering a trademark involves checking the sign in the registers, selecting the correct class and filing an application with the Industrial Property Office. After the registration process, which takes 5-12 months, you get the exclusive right to use the mark. Fees start at CZK 5,000, with the option to extend protection every 10 years. If you plan to expand, consider a European or international trademark. Thorough research and legal support can minimize the risk of registration failure.