Slovak Financial Law News 2004

Amendment to Trademark Act

Act No. 14/2004 Coll., amending and supplementing Act No. 55/1997 Coll. on Trademarks, as amended by Act No. 577/2001 Coll.

Pursuant to the argumentative report to the amendment to the Act on Trademarks, the purpose of the amended legal regulation of trademarks is to prepare national legal environment for the fact that after the entry of the Slovak Republic into the European Union (``EU''), the Community trademarks acquired on the basis of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark (the ``Regulation'') will be valid also in the territory of the Slovak Republic.

The new legal regulation introduces some material changes in comparison with the previously valid legal status, such as extension of persons authorised to acquire a trademark, while the trademark owner may be also a legal entity or natural person who is not engaged in business. The new legal regulation provides protection of the Community trademark in the territory of the Slovak Republic and it establishes an institute of a ``trademark which has a reputation'' (in compliance with the First Council Directive No. 89/104/EEC to approximate the laws of the Member States relating to trade marks and with the Regulation). Under the legal regulation of the ``trademark which has a reputation'', it is possible to file objections against registration of a later applied mark, provided that the use of such later applied mark would dishonestly benefited from the distinctive character or the trademark which has a reputation with earlier priority right, or would cause a damage to such trademark.

Pursuant to the new legal regulation, it is not allowed to recognise as a trademark a mark subject to an application of the trademark, which has not been filed in good faith. The establishment of this principle should lead to greater intensity and reinforcement of protection of the rights of trademark owners.

A mark shall not be recognised as a trademark where the Industrial Property Office of the Slovak Republic (the ``Office'') finds out, based on enforced objections, that it is identical or interchangeable with a Community trademark with earlier priority right which has a reputation within the territory of the European Communities, if the use of such mark on goods or services (even if they are not similar to those for which the Community trademark which has a reputation is registered) would gain dishonest benefit from the distinctive character or the repute of the Community trademark, or would cause a damage to it.

The Act also stipulates a duty of the Office within proceedings on deletion of a trademark to delete a trademark from the Register of Trademarks for the same reasons as stated in the above proceedings on objections.

In compliance with the Regulation, the new legal regulation introduces the so-called institute of comments which serve as an informal motion for review of the applied mark by a third person and enable any person to express his/her view on, or submit a written comment on, the trademark application. The reason for introducing such institute is supervision of the professional public over claimed exclusive rights. The stated comments have a character of a motion and a petitioner does not become a party to the proceedings on the trademark application. The Office is not bound by filed comments, it only takes them into consideration when deciding on the registration of a trademark in the Register of Trademarks. A possibility of filing comments is limited in terms of time within a period of the registration of the trademark in the Register of Trademarks.

The Act also includes special provision on effects of deletion of the trademark. It is important in providing legal certainty to persons who entered into an agreement, or were parties to the proceedings on violation of rights arising from the trademark before a decision on deletion of the trademark from the Register of Trademarks has become effective. Under the mentioned provision (i) agreements concluded prior to the effectiveness of the decision on deletion of the trademark to the extent of performance provided on the basis of these agreements prior to the effectiveness of such decision, and (ii) a decision in relation to violation of the rights to the trademark (which became effective and were exercised prior to the effectiveness of the decision on deletion of the trademark from the Register of Trademarks) shall remain valid and effective. However, this fact does not prevent the trademark owner whose trademark was deleted to be liable for damage or unjustified enrichment that have arisen as a result of deletion of the trademark.

The amendment to the Act introduces in compliance with the Regulation a possibility of filing a Community trademark application with the national Office, which is subsequently obliged to pass this application on to the Office for Harmonization in the Internal Market being the European Communities agency after marking the date of filing on the application. The filing of such trademark application is not limited to the citizens of the Slovak Republic, or to persons residing or having registered office in the territory of the Slovak Republic. Pursuant to the amendment, all persons stated in the Regulation as persons, who can become the owner of a Community trademark, shall have such possibility. The registration of the Community trademark has the same effects in the territory of the Slovak Republic as the registration of a trademark in the Register of Trademarks performed by the Office.

The national and the European system of trademarks shall be interconnected as from the date of entry of the Slovak Republic into the European Union, when Community trademarks registered by the Office for Harmonization in the Internal Market prior to the accession of the Slovak Republic to the European Union shall be also valid in the territory of the Slovak Republic. Under the new legal regulation that became effective as of the validity date of the Treaty of Accession of the Slovak Republic to the European Union (i.e. as of 1 May 2004), the owner of a national trademark who filed a trademark application with the priority right in good faith prior to the accession of the Slovak Republic to the EU, is entitled in case of the fulfilment of requirements stipulated by the Act to prohibit the use of the Community trademark (effects of which were extended to the territory of the Slovak Republic by the entry of the Slovak Republic to the EU) in the territory of the Slovak Republic, including the right to compensation for a damage caused to the owner as a result of the use of the Community trademark in the territory of the Slovak Republic.

This Act came into force on 1 February 2004, except for some provisions which became effective as of the validity date of the Treaty of Accession of the Slovak Republic to the European Union.

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