Trade mark opposition in the Czech Republic
- An applicantion for trade mark can be opposed so that an sign for which the protection is sought shall not be entered in the Register on the basis of opposition filed with the Czech Industrial Property Office (hereinafter referred to as “opposition”)
a) by the proprietor of an earlier trade mark which is identical with the sign applied for and is protected for identical goods and/or services for which the sign applied for is to be registered,
b) by the proprietor of the earlier trade mark where, by reason of the identity or similarity with the earlier trade mark and the identity and/or similarity of the goods or services covered by the sign applied for and the trade mark, there is a likelihood of confusion on the part of the public; the likelihood of confusion shall be deemed to include the likelihood of association with the earlier trade mark,
c) by the proprietor of an earlier trade mark which is identical or similar to the sign applied for, irrespective of whether the sign applied for is to be registered in respect of identical, similar or dissimilar goods or services to the goods or services for which the earlier trade mark is protected, and it is an earlier trade mark which has a reputation in the Czech Republic and, in the case of a trade mark of the European Union, in the territory of the European Union, and the use of the sign applied for without due cause would unduly benefit from or be detrimental to the distinctive character or reputation of the earlier trade mark,
d) by the proprietor of the trade mark, where the application for a trade mark (hereinafter referred to as ‘the application’) has been filed by a representative of the proprietor of the trade mark in his own name and without the consent of that proprietor, unless the representative has duly justified his action,
e) by a user of an unregistered sign or other sign used in the course of trade who, before the date of filing of the application, has acquired rights in the unregistered sign or other sign used in the course of trade, if, by reason of the identity or similarity of the sign applied for with the unregistered sign and/or other sign and the identity or similarity of the goods and/or services to which those signs relate, there is a likelihood of confusion on the part of the public; the likelihood of confusion shall be deemed to include the likelihood of association,
f) by a natural person whose right to protection of personality, in particular the right to a name, the right to a likeness and the right to protection of expressions of a personal nature may be affected by the sign applied for, or, where appropriate, a person entitled to assert those rights,
g) by a person to whom rights in a copyright work belong, where the copyright work may be affected by the use of the sign applied for; or
h) by the owner of an earlier right in another industrial property right, where the industrial property rights may be affected by the use of the sign applied for.
- Oppositions may also be filed by the applicant for a trade mark referred to in Section 3(c) and by the applicant or applicant for registration of a right in other industrial property referred to in paragraph 1(h), if that right is to be registered.
- Where the person entitled to file an opposition under paragraph (1) (hereinafter referred to as the “opponent”), after the filing of the opposition, consents in writing to the registration of the mark applied for, he shall be deemed to have withdrawn his opposition and the Office shall discontinue the opposition proceedings.
Filing an opposition
Opposition must be substantiated and supported by evidence enabling each objection to be heard. They may be filed in documentary or electronic form on the basis of one or more of the earlier rights listed above, provided that they all belong to the same opponent. Oppositions may be filed on the basis of part or all of the goods and/or services for which the earlier right is protected (or applied for).
Time limit for filing a notice of opposition
Oppositions must be filed within three months of the publication of the application in the Czech Patent and Trade mark Bulletin. This statutory time limit cannot be extended and its delay cannot be waived. The time limit for filing objections to the registration of an international trade mark with the Czech Republic indicated shall begin on the first day of the month following the month in which the trade mark was published in the Bulletin of the International Bureau of the World Intellectual Property Organisation.
If the opposition is not filed within the statutory time limit, the Office shall reject the opposition. The Office shall not take into account any addition ground and/ir argument of the opposition and an evidence submitted in support thereof after the above-mentioned three-month period.
Administrative fee for filing an opposition
The fee for filing an opposition is CZK 1 000. It is payable within the time limit for filing the opposition, i.e. within 3 months of the publication. The opponent may pay the administrative fee at any time within the three-month opposition period. If the objection fee is not paid within the time limit for payment, the objection shall be deemed not to have been filed. No proceedings shall be initiated in respect of objections deemed not to have been filed. In the case of payments by stamp, the date of payment shall be the date of receipt of the stamped objections at the Office (personal submission at the Office’s registry). In the case of the submission of a postal item containing stamped opposition, the date of payment shall be the date on which the postal item is submitted to the postal service operator (holder of a postal licence or special postal licence or a person having a similar status in another State). In the case of fax and e-mail submissions with a stamp affixed (in the case of e-mail in scanned form), the fee shall be deemed to have been paid provided that the submission is confirmed by the original with the stamp affixed within 5 days. E-mail submissions bearing a recognised electronic signature or submissions received via data mailboxes may be sent scanned with a stamp affixed and supported by the original documentary evidence within 5 days. The date of payment shall then be the date of receipt of the e-mail submission or data message.
(1) The Office shall reject the opposition if they have not been filed within the statutory time limit, have not been filed by the person named above, have not stated the grounds for filing the objection or have not been supported by evidence.
(2) If the Office does not reject the opposition under subsection (1), it shall inform the applicant of the contents of the opposition and shall fix a time limit within which the applicant may comment on the opposition. If the applicant fails to comment on the objections within the time limit set, the Office shall decide on the objections in accordance with the contents of the file (ex offico).
(3) If the Office finds that the sign applied for does not interfere with the opponent’s legally protected prior rights, it shall reject the opposition.
(4) If the Office finds that the sign applied for interferes with the opponent’s statutorily protected earlier rights, it shall refuse the application. If there is a ground for refusal only in respect of some of the goods or services, the Office shall refuse the application only in respect of those goods or services.
(5) The Office shall publish the details of the rejection of the application or of the rejection of the opposition in the Patent and Trade mark Bulletin.