New statutory regulation opens new opportunity for registration of atypical trademarks

On 14 January 2019, the Act No. 291/2018 Coll., amending Act No. 506/2009 Coll. on Trademarks, as amended and amending certain laws (hereinafter the “Amendment”) came into the force.

One of the most significant changes to the Trademarks Act is the removal of the condition of the graphic expression of the trademark and therefore the trademark may be expressed in any appropriate form (not only graphically). The new legislation thus opens new possibilities for registering of atypical trademarks. For example, according to the amended implementing regulation to the Trademarks Act, so called a multimedia trademark has been introduced, consisting of the combination of image and sound.

The Amendment introduced the principle of so called real use of the trademark. This means that:

• if the owner of the trademark claims for a ban on using the trade mark by a third person by a judicial claim filed after five years since the registration of his trademark, the owner must prove its real use during the preceding five years or the reasons for its non-use by a third person,

• if an application of a new applicant was filed after five years since the registration of the older trademark, the Industrial Property Office of the Slovak Republic (hereinafter the “Office”) shall register the trade mark in favor of the new applicant, if the owner does not prove its real use for preceding five years or the reasons for its non-use by a third person,

• on the basis of a third person's motion, the Office shall deregister the trademark if the trademark has not been used for a period of five years.

The Amendment of the Trademark Act brought about a change in the area of the ​​absolute and relative barriers for the registration. According to the Amendment, the Office shall no longer examine the conformity of the trade mark with the older trade mark of another applicant or owner for identical goods and services.

The absolute barrier for the registration of a trademark is its inconsistency with the legal regulations or obligations of the Slovak Republic or of the European Union resulting from international treaties concerning, in particular the protection of designations of origin and geographical indications, traditional terms for wine and guaranteed traditional specialties and which in their essential elements reproduce the older name of the variety plants.

The Amendment extended the relative barriers for the registration. The Office shall not register the mark as a trademark also in the case, when the person who is aggrieved on his rights has filled an objection with an application which has not been filed in good faith.