Trade marks is the term by which the company describes itself, its products and services. Thanks to this they differ from other companies, bringing to the market the same or similar goods and services from the customers´ point of view.
About Trade Marks
Trademarks are one of the most widely used methods of labeling products and services. These marks can be placed on any products, packaging, promotional materials, on business documents in various sizes, shapes, graphic designs and any color.
Following symbols are used to mark the trademarks:
- ™ – unregistered trade mark, i.e., the mark used to promote products or branded goods
- SM – unregistered service mark used to promote or for brand services
- ® – registered trade mark
A trademark is a mark that serves to distinguish goods or services on the market. The purpose of the trade mark is to distinguish goods or services of the same kind produced or provided by different manufacturers or service providers. The entrepreneur is thus guaranteed that his/her products and services came to the attention of consumers who are better oriented in a wide range of goods and services. Effects of the mark and its impact on the customer also ensure the flow of products and services on the market, along with the use of good reputation, or general knowledge of such a mark eventually.
A trade mark may be only marks that can be represented graphically (written, drawn) and which is capable of distinguishing the goods or services for which it is protected from identical products or services provided on the market from other commercial sources. A trade mark cannot exist by itself, without connection with specific goods that indicates or services that are provided under this mark.
Under the conditions set by law, the trade mark may be the registered trade mark:
- word marks in the current font or specific graphic design,
- signs in the form of a certain drawing, a pictorial representation, as well as combinations of words and drawings, called logo,
- space (3D) sign, which consists of the shape of the product or its packaging, or combinations of such shapes with words or drawings,
- sign consisting of a color or color combination
To sign as a trade mark applied fulfilled its purpose for both consumers and businesses, certain criteria apply. They are mainly in close association with the mark on the business activities of the entity that it applies for, a good character to distinguish the sign from an already registered trade marks of the incumbent and fantasy, originality and unusual character such a sign, including its expressiveness and if it is easy to keep in mind.
Exclusions of eligibility for registration are defined as a possible trade mark registered in the register of trade marks. These barriers to register a mark in the register of trade marks and marks may be unsuitable for registration either entirely, which means that marks cannot be registered at all or in part, in which case the mark is registrable only with some reservation, restriction or with the consent of third parties.
Following cannot be registered into (non registrable trademarks):
- sign that cannot be graphically depicted (e.g. audio jingles, special aroma, television transmission),
- mark, which has no capacity to distinguish goods or services,
- mark which consists exclusively of signs or indications which serve in trade to designate the kind, quality, quantity, purpose, value of products or services, data of geographical origin or data about the production of products and services,
- mark consisting exclusively of the shape of the product resulting from its nature, or is necessary to obtain a technical result or gives the product its substantial value for money (the shape of a product that is widely used to or conditioned by the technical properties of goods),
- mark which is contrary to public order and morality,
- marks which may mislead the public, especially about the nature, quality or geographical origin of products or services,
- sign applied for wines or spirits containing a geographical indication, without wine or spirits have such a geographical origin,
- sign, which contains elements enjoying protection under Article 6 of the Paris Convention the registration of which was not approved by the competent authorities,
- signs including badges, emblems and escutcheons other than those listed in Article 6 of the Paris Convention, if their use is of particular public interest, unless the competent authority has given its consent to the entry,
- signs with high symbolic value, especially containing religious symbols,
- signs, whose use is contrary to the provisions of other legislation or is contrary to the obligations of the Czech Republic under international treaties,
- sign when it is evident that the trade mark application was not made in good faith,
- sign which is identical with the earlier trade mark which is registered or registered for another person for identical goods or services and further signs containing the elements of the earlier mark, which could lead to confusion. This fact can the applicant verify before filing a trade mark by executing an examination,
- sign which infringes the rights of third parties, applied properly and with timely filed objections to the trade mark.
Representation of the mark
The registered trade mark must be registered in the trademark register administered by the Industrial Property Office (IPO). Before registering a new trade mark this office is examining whether a mark has all required elements and attributes, whether it is not identical or confusingly similar to another trade mark.
In addition to the registered trade marks, there are some marks that have no same function, they are:
- Collective Marks is a specific type of trade mark which is used to distinguish goods or services offered by members of the association or group of traders (trade association) from goods and services offered by individual traders.
- Certification marks is also a specific type of trade mark, which guarantees that the goods or services bearing the mark meet certain defined standards or have a specific property. These standards define or their properties are set by the trade mark owner. These marks are usually registered in the name of the Ministry, institute of technology, etc.
Validity of TM
Registered sign as a trade mark has become the symbol R in the ring ® mostly in the upper right corner. Trade marks are valid for ten years from the date of filing and at the request of the proprietor’s recovery is possible, every time for the next ten years. If such a request is not filed within the prescribed period, the trade mark will disappear.
Function and protection
The trade mark owner has the exclusive right to use the trade mark in connection with the goods or services for which it is protected. In the event of unlawful interference with the rights of the trade mark its owner has the right to demand a competent court that the violation or threat to law to be prohibited, including the elimination of the consequences of such violations.
Registered trade mark may be transfer to another owner by a written agreement, to whole extent or in part, under special legal regulations the transition to the new entity is also possible. A trade mark may be subject to a lien, subject to enforcement measures and execution, and may be included in bankruptcy or in the list of property settlement proceedings. On the basis of licensing agreements one may also provide the other entity the right to use the trade mark, either for the whole range of protected products and services or only some of them.
If the owner within 5 years from the registration did not start properly use the sign for the goods or services for which the mark is registered, or if such use has been discontinued at least at the same time, such a mark is removed. Owner of the registered trade mark is also entitled to give up the rights to the trade mark, either for all of the registered goods or services, or for only one of them, or limit the scope of protection in relation to a particular element of the mark. At the request of a third person and at the conditions specified by law it is possible to repeal a trade mark or it can be declared invalid, in its entirety granted protection, or only specific part of the list of goods and services.
The owner of registered trade marks may begin a legal act by the event of a breach, in order to prevent unauthorized use of the mark. However, trade mark registration is not required. The owner of an unregistered trade mark may also file an incentive to action, but an unregistered trademark can be protected only within the geographic area in which it was used, or areas in which we can assume that it will expand.
A mark is always related to a specific territory, depending on whether it is a mark of national, international or European Union mark.
Before filing a trade mark application, it is necessary to define the products and services for which the mark is to be registered. For the classification there is Nice Classification, which contains 45 classes. It is used in more than 140 countries worldwide and for international applications for registration of marks under the Madrid Agreement and Protocol.
The trade mark can be register individually at the Industrial Property Office. Permission to apply the trade mark has any individual or legal entity, which is legally competent, either directly or through his agent, especially a lawyer or patent attorney. The application may be submitted in person or by mail or by fax or electronically, and, if it is submitted by fax or electronically without a certified electronic signature, it must be no longer than five days confirmed by the original written submission.
The application must contain a request for registration of the trade mark in the register, the name and address of the company (as legal entity), or the name and address of the applicant (as individuals), text or illustrations of the printed signs, the list of goods and services for which the mark is registrable and signature of the applicant or his/her representative. In the event of an mark of other than verbal form and in casual font, it is accompanied by three signs, and if the applicant is represented, as well as power of attorney.
In the case of a collective trade mark, the application must be accompanied by a written agreement between all parties which set out the conditions for use of collective mark. Collective trade mark, compared with an individual mark, however, enjoys some restrictions, in particular cannot be licensed, cannot be given as security and cannot be transferred to another individual or legal entity.
Proper filing leads to applicant acquiring of the priority before anybody that would later applied an identical or similar trade marks for identical or similar goods or services.
After completion of the formal and substantive examination and, if all conditions for registration are fulfilled, the application is forwarded for publication in the IPO Gazzette stating that after the statutory three-month period and if there has been no reasoned objections to its registration, supported by appropriate evidence by authorized persons in writing, the sign is registered as a trade mark into Trade mark Register. By the time the registration of the trade mark any person may also submit any so-called comments, which are look at in substantive examination of the trade mark application and deciding on the registration of the mark in the register.
Community trade mark applies to the member states of the European Union. In the same way as in case of the international registration, using only one registration mark (CTM) at Organisation for Harmonisation in the Internal Market (OHIM), located in Alicante (Spain), one can achieve protection in multiple countries, in this case in all countries of the European Union. For CTM a condition for the existence of a national trade mark is not defined, i.e. you can submit an application directly with OHIM. Among the advantages of the mark is the automatic and free of territorial expansion at the next EU enlargement, and also that a sufficient proof of the obligation to use is the use in one member state of the European Union.
International trade mark is registered by the World Intellectual Property Organization in Geneva (WIPO). A prerequisite for an international registration is the existence of already registered national trade marks. The only international registration of trade mark protection can be also achieved in all countries which are members of the Madrid Agreement concerning the international registration of trade marks, respectively Madrid Protocol to the Agreement. Applicant may also request priority out of national trade marks.
International trade mark registration is for 5 years dependent on the existence of registration of same trade mark on the national level. If the trade mark terminates within five years from the date of the international registration also the international registration in the international register will be canceled.