Slovakia: new trademark legislation

On 1 January 2010, new trademark legislation came into force.

The new law replaces the 1997 Act on Trademarks. It also repeals the old implementing decree and authorises the Industrial Property Office to issue a new one.

Any trademark proceedings under the old legislation which were ongoing at 1 January 2010 must be continued under the new act, with outstanding applications also required to be brought into line with the new requirements on request by the IPO.

The IPO chose to introduce new legislation rather than amend the existing laws in order to implement EU trademark regulations more precisely than before and also to reflect ECJ and Court of First instance rulings on Community trademarks.

Key changes introduced by the new law include:

• harmonising its terminology with EU law, for example using ‘similarity’ instead of ‘interchangeability’ both as a reason for not registering a mark and as a basis for trademark infringement
• making the system more coherent and transparent, for example by dealing with parallel imports under provisions on the exhaustion (rather than the restriction) of trademark rights
• using restriction to mean any event where the owner has to tolerate third party use of its trademark
• introducing a right to compensation for damage suffered after a trademark application is published, which can be treated as an infringement of rights after registration
• stating more precisely the right of owners, where their trademark is reproduced in a dictionary, encyclopedia or similar publication so as to create the impression that it is a generic name of goods or services, to demand that the editor publish a disclaimer (no later than in the next issue of the publication) saying that it is a trademark
• explicitly allowing applicants to split applications in order to extract certain goods or services from the main application and include them in one or more sub-applications; this reflects previous IPO practice

The provisions on assignment and transfer are revised and divided into separate sections. They unify the set of persons who are entitled to apply for registration of assignment transfer, and also of licence agreements. Any party to a trademark agreement may file for registration; in case of transfer of rights both the new and the original trademark owners may file for registration.

In addition, the courts are now authorised instead of the IPO to decide on applications by the owner of a foreign trademark to make changes in its ownership, where its was registered in the name of the owner’s business representative. This might lead to unnecessarily lengthy proceedings, considering the speed of judicial processes, the high number of disputes due to the rise in international trade and the fact that only three courts in the Slovak Republic have jurisdiction to decide such cases.

Under the new law, deletion from the register is replaced by cancellation as a form of trademark expiry (the others being waiver by the owner and expiry 10 years after filing an application with no renewal application).

Cancellation is available where the trademark is not really used, becomes generic or is used to deceive the public as to the nature, quality or geographical origin of goods or services. The IPO may also cancel a trademark where a court rules that it violates the rights for protection of personality, interferes with the reputation of a person or body, interferes with older rights to author works or its use constitutes unfair competition.

The IPO may declare a trademark to be invalid where its registration did not comply with the registration requirements in force at the time of registration. This means it would be treated as if it were never registered in the trademark register. It may be also declared invalid after it expires, which may be of use where the person seeking to invalidate the trademark faces pending litigation over the trademark after registering it.

Law: Act No. 506/2009 on trademarks, replacing Act on Trademarks No. 55/1997 Coll. as amended