Registering a trademark: from the search to registration, and choosing between SR, CR and the EU

Registering a trademark looks like a formality: fill in the form, pay the fee and wait for registration. The outcome, however, is decided by steps the form does not call for. These are the choice of a sign capable of registration, a precise list of goods and services, and verification that no one already holds an earlier right. Act No. 506/2009 Coll. on trademarks requires the Office to examine only part of that.

The application and the list of goods and services

An application contains a request for registration, details of the applicant, a representation of the sign and a list of the goods or services for which the trademark is to be registered (Section 24(2)). The list is classified under the international (Nice) classification and its wording is of fundamental importance:

In the list of goods or services, the applicant must identify the goods or services for which protection is sought with sufficient clarity and precision to enable the competent authorities and the public, in particular economic operators, to determine on that basis the extent of the protection sought.

— Section 24a(2) of Act No. 506/2009 Coll. (unofficial English translation)

General terms from class headings cover only goods and services that clearly fall within their literal meaning (Section 24a(4)). After filing, the list may be narrowed, but the law does not permit it to be broadened (Section 27(2)); new goods require a new application. The list should therefore be compiled according to what you actually sell and plan to sell, not according to what sounds broad. For an e-shop it may cover both goods and retail services.

The date of filing gives rise to a right of priority over anyone who later applies for an identical or similar sign for identical or similar goods and services (Section 26(1)). Registration is valid for ten years from the date of filing and is renewed on request for a further ten years (Section 22(1) and (2)).

What the Office examines and what it does not

The Office examines whether the application meets the statutory conditions and refuses it if the sign is not capable of registration, for example because it lacks distinctive character or merely describes the kind or quality of the goods (Section 5(1) and Section 28(4)). It does not itself assess earlier trademarks of other parties. If it finds an identical earlier trademark for identical goods and services, it merely notifies this, before publication, to the applicant or to the proprietor of the earlier trademark (Section 28(3)). It then publishes the application in the official journal (Section 28(6)).

Publication starts the opposition period for holders of earlier rights:

After publication of the application in the official journal, a person referred to in Section 7 (the “opponent”) may, within three months of that publication, file oppositions on the grounds set out in Section 7.

— Section 30(1) of Act No. 506/2009 Coll. (unofficial English translation)

Oppositions may be filed by the proprietor of an earlier trademark, by a user of an unregistered sign of more than mere local significance, by the author of a work or by another person with an earlier right. Observations on grounds of incapacity of the sign may be filed by anyone until registration (Section 29(1)). A pre-filing search is therefore the main way of discovering in advance the earlier rights that the Office does not consider of its own motion. How oppositions are filed when you are on the side of the earlier right is explained in oppositions against a trademark.

A Slovak, Czech or European trademark

A Slovak trademark protects the sign in Slovakia and the proceedings are conducted by the Industrial Property Office of the Slovak Republic. A Czech trademark is filed with the Czech office under Act No. 441/2003 Sb. and the proceedings have a similar structure, including a three-month opposition period from publication of the application (Section 25(1) of Act No. 441/2003 Sb.). An EU trademark filed with EUIPO has unitary character and the same effect throughout the Union (Article 1(2) of Regulation (EU) 2017/1001).

Unitary character has its flip side. Earlier trademarks on the basis of which oppositions may be filed against an EU application include trademarks registered in any Member State (Article 8(2)(a) of the Regulation), and the opposition period here too is three months from publication (Article 46(1)). A conflict with a national trademark in a single state may thus halt registration for the whole Union. A company operating in Slovakia and Czechia therefore needs to compare whether an EU trademark or two national trademarks is the better option, and to conduct the search to the extent of the route chosen.

The combination is made easier by the right of priority under the Paris Convention. If, within six months of a first application, you file a further application in another state, you may claim in it the filing date of the first application (for an EU trademark this is expressly stated in Article 34(1) of Regulation 2017/1001); under Slovak law the right of priority must be claimed in the application itself and proved within three months of its filing (Section 26(2)). International registration through the World Intellectual Property Organization is based on a basic national application or registration.

After registration

A registered trademark must actually be used for the registered goods and services. If you do not use it for an uninterrupted period of at least five years, the Office may cancel it on an application by a third party (Section 34(1)(a)); the details are discussed in cancellation of a trademark for non-use. The trademark must also be watched, because only a proprietor who learns of later similar applications in time can act against them. If your sign is a logo from an external designer, check the licence before filing, as set out in the article a designer’s logo and a trademark.

We handle the search, classification, the application before the Slovak or Czech office or EUIPO, and representation in the proceedings, through our trademark service.