Intellectual Property Law

Intellectual Property Law
© 2005 Michal Černý Ph.D.
Main Topics
• Corporate Name
• Trademark
• Appelation of Origin
Corporate Name
• Corporate Name = name recorded in
business register
• Legal regulations – ComC (sections 8-12)
• Corporate name is protected
Physical / Legal person
Physical person
• Name & surname
(duly)
• Additions
(addendum) are
permitted
• (local addition,
material addition,
personal addition)
• Mgr. Ian Blabla,
lawyer
Legal person
• Free creation of
comercial name,
companies must have
addition (addendum)
according to legal
legal form
Limitations
• NO corporate name may be misleading
(tricky)
• NO corporate name may be
interchangeable with corporate name of
others
• The register court is qualified to judge the
issue / application for record and it can
refuse registration (record into register)
• If there is a difference only in addendum
of legal form then corporate names are
Concurrence between several corporate
names
• Person recorded earlier can sue person
recorded later (so called formal protection,
see section 12)
• If earlier recorded person win later
recorded person must change its corporate
name
• ABC s.r.o. (ABC Ltd.)| ABC a.s. (ABC plc.)
• ABC s.r.o. | A.B.C. s.r.o.
Demands
• To desist from further use and eliminate
such practise
• Demand the surrender of unjust
enrichment
• Granting an appropriate satisfaction
• Compensation for damage (caused by such
practise)
• The court can also grant the plaintiff the
right to have the court`s published on
defendant`s expenses
Person not recorded in commercial
register
Those persons must use:
• Physical persons: Name & surname,
additions are possible
• Legal persons: Name (written down in
founding cotract)
Protection of their names – by unfair
competition law only (see section 44 and
following)
Where are corporate names
used
• All contracts (section 8 +), all business
documents (offers, letters, invoices) – see
section 13a
Trademarks
Trademark may consist:
• Any sign capable of beeing represented
graphically, particularly words, including
personal names, colours, designs,
numerals, the shape of goods or their
packaging, provided tt such sign is capable
of distinguishing goods or services of one
undertaking from those of another
undertaking
Sources
• Act 441/2003 Coll. on Trademarks
• Council Regulation on the Community
Trademark (No 40/94)
• Paris Convention for the Protection of Industrial
Rights
• Madrid Agreement 1891 – (international record
of trademarks)
• Nice Agreement 1957 – (classification of
products and services)
• Vienna Agreement 1973 – (classification of
figurative elements)
Protection is grated to …
• National trademarks – trademarks
recorded in register of trademarks in
Intellectual Property Office – Úřad
průmyslového vlastnictví (see webpage
www.upv.cz)
• International trademarks with effects for
CZ – recorded in register of WIPO/OMPI
• Community trademarks – Office for
Harmonisation of Internal Market (see
www.ohim.eu.int)
• Well known trademarks – marks well
known on territory of CZ (within meaning
of article 6bis of Paris Convention for the
Protection of Industrial Rights and
meaning of article 16 of the Agreement on
Trade-Related Aspects of Intellectual
Property Rights
Procedure of trademark recording
•
•
•
•
•
Application, the right of priority
Formal investigation
Material research
Publication in IPO (official) Journal
3 months period for objections (of third
parties)
• Decision on objections –
Application
• Applicant – legal /physical person, CZ / EU, other
persons can also apply
• Application must contain: a trademark, list of
products / services (classified along to Nice
Agreement)
• If a trademark is not just a word (word mark) then
5 copies of printed picture must be enclosed),
additional list of products / services must be
enclosed if an application contains a lot of
products / services (about 100 items)
• Application must be signed, fee must be paid
(basic fee 5000 CZK = € 167, basic fee covers
products / services up to 3 classes, additional fee
Formal investigation
• Section 21- IPO investigate whether
application meets requirments of Act
(section 19)
• If not then IPO must grant period for
withdrawing of faults, this period must be
at least 15 days
• If faults are not withdrawn then IPO
refuses application
• Fee must be paid
Material Research
Section 22
• IPO examines whether mark meets
requirements demanded by Act (sections 4
and 6)
• IPO can grant an applicant a period for
evidence to be attest – for example: if the
mark is general and can not distinguish
(products / services)
• If mark pass through this stage then the
mark will be published
Publication
• IPO (official) Journal
• The time period for objections and
observations starts since publication
• Objections (námitky) – can be made by
owner of trademark, owner of other rights …
the person is a party to an action. Fee must
be paid
• Observations (připomínky) – can be made
by everybody, but this person is not party to
an action. IPO takes account to delivered
observations. Observations are free (no fee).
Objections
• if objections accepted then application is
refused. If o. not accepted the record is
granted. Each party (applicant, person
which put objections) may appeal. The
IPO chairman makes a decision. His
decision can be charged in administrative
(justice) court only.
Registration in register
• If no objections are delivered to IPO
• If all objections were rejected by IPO or
were withdrawn by proposers
• Then mark will be recorded. Period of
protection is 10 years (since the date od
priority right = since application was
delivered to IPO)
• Period of protection can be promulgated,
the owner must ask for that not sooner than
last 6 months of protection period.
Clasification of trademarks
• By type – word mark, 3D mark, only
coulour mark, figurative mark, combined
mark (with word and figurative elements)
• By colour – Black and White, coloured
• By owner – Individual, collective mark
(individual mark can be transfered, licensed,
mortgaged)
Word mark
• The owner is
protected against any
interchangeable
marks.
• The owner can estop
record of any other
mark (no matter of
styling of those
marks)
• Example:
• MICROSOFT
Word mark (styling)
• Styling (font) can
differentiate two
marks
• Up until any of them
is well-known
Picture mark
• Only figurative
elements (pictures),
no word element
• Figurative elements
are categorized –
Vienna Agreement
Combined mark
• Word AND figurative
elements (mostly
picture)
3D mark
• The design is
protected
• Usually a picture of
mark is recorded
(only) colour mark
• First Community
(only) colour
trademark is shown
nearby (Milka violet)
• Colour is protected
Speciality: First „Smell“ mark
• CTM 000428870
• (28) tennis balls
• Description: The
mark consists of the
smell of fresh cut
grass applied to
the product..
THE SMELL
OF FRESH
CUT GRASS
Well known marks
Famous marks (Act 174/1998 Coll.)
Trademark renommée
• Registered or non registered (wel known)
• Higher protection then well known marks
• Those marks are protected against
anything what could affect their
renommée