Amendments to the Czech and Slovak Trademark Acts implementing the EU trademark reform of 2015 have been recently passed by the respective parliaments. The amendments will become effective on 1 January 2019 in Czechia and on 14 January 2019 in Slovakia. There are 3 major changes to be noted:
1) New definition of a trademark
The amendments eliminate the requirement for a sign to be capable of graphic representation, which is replaced by requirement of being represented on the register in a manner which enables to determine the clear and precise subject matter of the protection afforded to its proprietor. New types of non-traditional trademarks have been introduced: position, pattern, sound, motion, multimedia and hologram marks.
2) No official examination on relative grounds
Under the amendments, the Czech and Slovak Offices will no longer refuse later applications on grounds of earlier identical marks protected for identical goods and services. The proprietor of the earlier mark will have to seek rejection in opposition proceedings.
3) Proof of use in opposition and infringement proceedings
The possibility is introduced for the applicant to request proof of use of trademarks invoked in oppositions proceedings that are older than 5 years from registration. The applicant may only file the request within inextensible and non-restorable time limit of 2 months from notification of the opposition. The opponent must submit evidence within 4 months from notification of the request. Proof of use may also be for requested by the defendant in infringement proceedings before courts. In Czechia, proof of use may be requested in opposition cases initiated after 1 January 2019. In Slovakia, proof of use may be requested in opposition cases where the 2-month time limit from notification of the opposition to the applicant did not expiry before 14 January 2019.