The Newcomers: National Trademark Protection in The New European Union Countries

By Ignacio Lazaro, SD PETOSEVIC, Belgium — Client Service Office, Published in Trademark World, March 2004

Focus: THE European Union

In summary
* This article reviews national trademark protection in eight of the European countries due to accede to the European Union on 1 May, 2004
* Trademark definitions, registration practice, validity and renewal terms, and opposition practices are reviewed for the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, the Slovak Republic, and Slovenia
* National trademark laws and implementing regulations are discussed, with areas of compliance to, and disparity with, TRIPs, EC Directives and Community Trade Mark practice highlighted

Ignacio Lázaro, of SD PETOSEVIC, outlines the systems currently in place in central Europe, with a focus on areas of compliance and disparity with existing EC Directives and Community Trade Mark practice

Enlargement of the European Union is now a reality. The ceremony of the signature of the Accession Treaty for the ten new member states took place on 16 April, 2003 in Athens. The 10 acceding countries (the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, Slovakia, Slovenia, Cyprus and Malta) now have observer status with regards to the EU, and will become full members on 1 May, 2004.

During the last few years, all these countries have made important efforts to bring their legislation on trademarks in line with the CTM system. However, this process of harmonization is not yet complete. Further amendments to adopt provisions relating to interfaces between the CTM system and national trademark law (such as whether the existence of CTM rights should be included in the list of grounds for refusal or invalidation) are expected in most of these countries.
Trademark registration may be obtained in all these countries via the Madrid system or through national registration procedures before the local industrial property offices. This article summarizes their registration procedure through the national route in the acceding Central European countries.

The Czech Republic

The main national legislation on trademarks in the Czech Republic comprises the Law on Trademarks No 137 of June 21, 1995, most recently amended by the Law Amending some Acts on the Protection of the Industrial Property, No. 116 of April 6, 2000 (in force as from 10 May, 2000).

This amendment sought to further harmonize Czech legislation with EU regulations, and to fulfill some of the obligations laid down by the TRIPs Agreement. The Trademark Law is implemented by Decree No 213 of 7 September, 1995.

After the split of the former Czechoslovakia in 1992, the Industrial Property Office (IPO) of the Czech Republic was re-established in Prague. In 2002, IPO received 9,918 trademark applications via the national route. Applications filed by foreign applicants represented less than 20% of this figure. On average, applications filed in 2002 matured to registration within 11 months.

Multi class applications are available in the Czech Republic, as well as in the other countries that will be analyzed in this article. Likewise, the 8th Edition of the Nice Classification of Goods and Services is applied in all of these countries.
Art 1 (trademark definition) and Art 2(1) (absolute grounds) are both respectively fully in line with Art 4 and 7 of the CTM Regulation, particularly following the amendments introduced in 2000. The amendments broadened the provision barring the registration of certain marks to include signs which describe properties of the goods or services, marks that are highly symbolic, particularly religious symbols, and marks for wines and spirits, if they refer to a geographical name and the product does not originate from the location in question.

The Czech IPO conducts the usual formal examination of the application, as well as an examination on absolute and relative grounds. However, it is important to underline that IPO only conducts a search for identical trademarks during the examination of the trademark application and only issues refusals on the basis of identical trademarks. In this respect, a provision for the acceptance of letters of consent (“written consent”) from the owners of prior marks was included expressly in the law (Art 3(1)) with the last amendment.

Once a trademark application is published, it may be challenged by any interested party by means of an opposition. The opposition system (three months from publication) was introduced in 1995. IPO will decline to take into account any supporting evidence filed after the three-month period. Under the last amendment, a trademark owner may file an opposition in accordance with the provisions of the Paris Convention (Article 6bis) or if, as a result of its promotion, the mark has become well-known among the relevant public sector in the Czech Republic (Art 9(1)(b)).

The registration is valid for a period of 10 years, but this term can be extended for a further 10 years upon request from its owner and upon payment of the relevant official fee. Late renewal of trademarks (within 6 months following expiry) is available in all of the eight countries discussed herein.

The Czech IPO will remove a trademark from the register at the request of a third party or ex officio on absolute or relative grounds (Art 25). However, the owner of a prior mark who acquiesced in the use of a conflicting mark for five consecutive years may not thereafter object to the use of this mark, unless it was adopted in bad faith.

IPO is also responsible for determining a cancellation request based on non-use of the mark (five consecutive years before the motion is filed). However, a court decision will be necessary if the mark infringes the rights for the protection of “individuality” or if it infringes a copyright, or if the use of the trademark goes against the fair competition rules (Art 26).

Estonia

In Estonia the Trademark Act (TA) was passed on 27 August, 1992, and entered into force on 1 October, 1992. Since then, it has been amended on various occasions, most recently on 19 June, 2002. The TA is implemented by Regulation No 15 of the Minister of Economic Affairs of April 7, 1998, which lays down the formal requirements for filing trademark applications in Estonia.

The Estonian Patent Office (EPO), after its operation discontinued in 1940, resumed its activities on 10 March, 1992. In 2002, the number of national trademark applications amounted to 1,891, some 46% of these being filed by foreign applicants. On average, trademarks filed last year matured to registration in 11 months.

Registrable marks are any signs capable of being represented graphically and of distinguishing goods/services from different natural or legal persons (Art 6(2)). Trademarks which consist of sound or smell are excluded from registration. Absolute grounds for refusal of registration are listed in Art 7 of TA, and are fully in line with the CTM system.

The Estonian TA (Section 12(6)) provides for an ex officio examination on absolute (§ 7) and relative (§ 8) grounds. Following the legislation of the other Baltic States, TA also provides for a post-registration opposition. However, in this case the opposition must be filed within two months from publication (Section 13(2)).

The duration of registration is for the standard 10-year period from the date of filing (Section 17(1)), and it may be renewed, ad infinitum, for further 10-year periods.

Section 24 states that a registration may be declared invalid if it was made in breach of § 7 (absolute grounds for refusal) or § 8 (relative grounds). In addition, Section 24bis contains special provisions concerning the invalidation and deletion of registrations containing geographical indications. Invalidation requests are filed with the Board of Appeals of EPO.

Hungary

The national legislation for trademarks in Hungary comprises the Law No XI of 1997 on the Protection of Trademarks and Geographical Indications (LPTGI), which was implemented by the Decree No 19/1997 (VII 1).

Established in 1896, the Hungarian Patent Office (HPO) is one of the oldest patent offices in Europe. In 2002, 5,944 national trademark applications were filed in Hungary, of which 27% were filed by foreign applicants. On average, trademarks filed in the last few years were registered within 12 months. However, the HPO has managed to shorten this period for recent applications.

A trademark is defined by Art 1 of LPTGI as any sign which is capable of being represented graphically and which can, in the course of trade, distinguish the goods or services from those of other undertakings. Such signs may include words, including personal names, designs, letters, and the shape of goods and their packaging.

Registration may be denied ex officio by HPO on absolute and/or relative grounds. Absolute grounds are established in Art 2 and Art 3: the mark consists exclusively of signs which may in the course of trade, refer to some characteristic of the product or service (for example: the kind, quality, quantity or intended purpose); marks which are customary in the current language or in the practices of trade; marks which consist of a shape (which results from the nature of the goods, which is necessary to obtain a technical result or which gives a substantial value to the goods); marks which may deceive consumers as to the nature, quality or other characteristics of the goods or services; marks filed in bad faith; and marks which consist exclusively of State emblems, official medal, badges, religious symbols, etc.

Following the filing of a trademark application, HPO conducts a preliminary formal examination, following which the application is published in the Official Bulletin, provided that it complies with filing requirements (Art 55). Any person may submit observations concerning absolute grounds of refusal during the registration procedure. However, only proprietors of earlier rights are entitled to file observations concerning relative grounds for refusal (Art. 58). A second formal examination is carried out by HPO, as well as an ex officio substantive examination on absolute and relative grounds.

The term of the trademark registration is 10 years from filing, renewable for further periods of 10 years.

Cancellation of the trademark may be requested before the HPO by any person on absolute grounds, and on the basis of non-use of the trademark for five years, as specified in Art 18. However, a cancellation based on relative grounds can only be requested by the proprietor of the earlier right invoked (Art 72).

Latvia

The Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia was adopted on 1 July, 1999, and came into force 14 days later. This legislation replaces the first post-Soviet trademark law of 1993.

A total number of 2,113 trademark applications were filed in Latvia in 2002 through the national route. Approximately 40% of these applications were filed by foreign applicants. The official administrative body for the trademark registration in Latvia is the Patent Office of the Republic of Latvia.

Article 3 of the Trademark Law contains the legal definition of a trademark, which largely coincides with the CTM concept. Likewise, absolute grounds in the Latvian law follow the CTM system closely. Art 6(2) foresees the rejection or cancellation of trademarks filed in bad faith.

Examination of the registrability of a trademark is based on the formal requirements of the trademark application and on absolute grounds for refusal of registration. Therefore, no examination of prior rights is conducted by the Latvian Patent Office. However, trademark applications may be refused during the examination stage on the basis of well-known marks. If the result of the examination is favorable, the trademark is registered and published. Within three months from the publication of the registration, any interested party may file an opposition before the Board of Appeals (post-registration opposition).

The trademark registration term is 10 years from filing. As usual, this term may be renewed for each subsequent ten-year period. Trademark registrations can only be invalidated, due to non-compliance with formal or substantial requirements of the law, by decision of the competent court. A cancellation action based on non-use (over five consecutive years) may also be brought before the court.

Lithuania

A new version of the Law on Trademarks of the Republic of Lithuania came into effect on 1 January, 2001.

The State Patent Bureau of Lithuania (SPB) was re-established on 12 April, 1991 after previously ceasing activities in 1940. The main functions of the State Patent Bureau include protection of industrial property (inventions, designs, trademarks, service marks, and firm names); drafting legal acts in the field of industrial property protection; representation of the Republic of Lithuania in international organizations; and international events related to industrial property protection. In 2002, 2,415 trademark applications were filed, 36% of which were filed by foreign applicants.

The standard EU concept of trademarks (signs which are capable of being represented graphically and of distinguishing goods/services) and absolute grounds for refusal have been transposed into the Lithuanian legislation: Art 2, 5 and 6 of the Law on Trademarks.

There is no ex officio examination of prior rights by SPB. As in the case of Latvia, prior rights may be invoked against the registration of a trademark during the three-month opposition period that follows grant and publication of the trademark registration (Art 18). The prior trademark owner must oppose registration or seek cancellation of the registration in order to protect his rights.

The term of trademark registration is 10 years from filing and may be renewed for each subsequent period of ten years. Invalidation on absolute (Art 6 ) or relative (Art 7 ) grounds and revocation (if, as a consequence of its use, the mark becomes generic or misleading, or in case of non-use for five consecutives years) of trademark registrations, can only be declared by a court decision (Art 46 and 47).

Poland

Poland recently adopted new legislation for the protection of industrial property: the Act on Industrial Property of June 30, 2000 (AIP), which came into force on 22 August, 2001. This new Act was adopted with the aim to bring Polish legislation in line with the corresponding EU regulations. Certain provisions will only come into force from the effective date of Poland’s accession to the EU.
The Patent Office of the Republic of Poland (POP) was established on 28 December, 1918. In the year 2002, 14,577 trademark applications were filed in Poland, 15% of which were filed by foreign applicants. The average period from application to registration is between three and four years. Any natural person or legal entity may apply for the registration of a trademark. Foreigners have the same rights as locals on the basis of international agreements or reciprocity (Art 5).

The definition of a trademark is given in Art 120 of AIP in line with Art 4 of CTM Regulation, although using a slightly different legislative technique. Likewise, Polish lawmakers laid down the absolute grounds for refusal in Art 129 to Art 131. According to Art 129, the following marks are devoid of distinctive character and therefore cannot be protected: those not capable of distinguishing goods-services, descriptive trademarks, and those signs that have become customary in the current language. Art 131 establishes other absolute grounds for refusal: marks contrary to law or morals; marks which infringe somebody’s personal or economic rights; marks which could mislead buyers as to the properties or origin of the goods; marks filed in bad faith; marks containing national or foreign symbols or emblems, or symbols of religious, patriotic or cultural nature; and geographical indications. Relative grounds for refusal are contained in Art 132.

Trademark applications are published in the Official Bulletin (Wiadomosci Urzedu Patentowego) immediately after the expiration of six months from the application date. Any person may then submit to the Patent Office their observations of possible obstacles that exist to the registration of the mark. In addition, POP conducts an examination to determine if the mark complies with the “statutory requirements” for protection. In other words, an examination on absolute and relative grounds is carried out. An opposition may be filed only after registration has been granted, within six months from the date of publication of the granting decision (Art 246).

The trademark registration is valid for a period of 10 years from the date of filing, and it is renewable for further periods of 10 years. Proof of use for renewal is no longer required.

Any interested person having a legitimate interest may request the invalidation of a non-distinctive trademark within five years from the date of its registration. However, if the trademark registration was obtained in bad faith, the request may be filed at any time during the term of protection of the mark. Cancellation requests filed on the basis of prior trademark registrations or well-known marks will not be accepted if the owner of the prior right acquiesced in the use of the trademark for five years. A trademark can be cancelled at any time if it is not used during a period of five consecutive years.

Slovak Republic

At the end of 2001, the Slovak Republic adopted Act No 577/2001, whereby the Law on Trademarks No 55 of February 6, 1997 was amended to further harmonize Slovak legislation with the EU regulations. The corresponding implementing regulations are contained in the Decree No 117/1997, which was recently amended by Decree No. 709/2002.

The Industrial Property Office of the Slovak Republic (IPO) was established on 1 January, 1993. In 2002, the number of national trademark applications filed with IPO was 3,790 (5% less than in 2001). Foreign applicants filed 38% of the total number of national applications. On average, trademarks filed in 2002 were registered within 15 months.

The new wording of Section 1 of the Law on Trademarks, which defines a trademark, is almost the exact transposition of Art 4 of CTM Regulation. Absolute grounds for refusal in Slovakia are also in line with the relevant CTM rules. A new Section 2(1)(j) excludes from registration signs applied for wines or spirits containing a “false” geographical indication.

For the registration of a trademark, standard application must be filed with IPO. Apart from the usual examination of formal requirements, IPO conducts an examination to determine whether the application complies with the conditions laid down by the Law on Trademarks: absolute and relative grounds. However, examination on relative grounds only covers identical prior trademark registrations and/or applications. Letters of consent are now a suitable means to overcome identical citations (Section 3(2)).

If the application meets all registration conditions, IPO publishes the application for opposition in the Official Bulletin. Oppositions must be filed within three months of publication and it is necessary to indicate at least the supporting evidence that the opposing party intends to submit in the opposition notice.
The term of protection for a registered trademark is 10 years from the filing date, with the possibility of extending this protection for further periods of 10 years.

Cancellation requests, including cancellations on grounds of non-use (five consecutive years), are handled by IPO. However, the revocation of trademarks on the basis of violations of “the rights to individual’s protection” (forename, surname, etc.), trade names, copyrights, or acts of unfair competition, requires a court decision (Section 17).

Slovenia

Slovenia can boast brand new legislation for the protection of industrial property rights. The new Industrial Property Act of May 23, 2001 (IPA), which entered into force on 7 December, 2001, replaces the still recent Law on Industrial Property of March 20, 1992. The fundamental aim of the new Law is to bring national legislation in line with the EU Directives and the TRIPs Agreement. The IPA is implemented, as far as protection of trademarks is concerned, by the Rules on procedure for the registration of marks of December 10, 2001.

The Slovenian Intellectual Property Office (SIPO) was established 12 years ago, on 25 June, 1991, when Slovenia became independent. In a decade of operation, SIPO has increased the level of protection of IP rights and improved trademark registration procedures. In 2002, the number of national trademark applications amounted to 1,858, 45% of these being filed by foreign applicants. On average, trademarks were registered within 327 days.

The definition of trademarks made by Art 42(1) of IPA is fully in line with Art 4 of CTM Regulation (“Signs of which a CTM may consist”). Art 43 of IPA, establishes absolute grounds for refusal of protection in line with Art 7 of the CTM Regulation 40/94: trademarks which are devoid of any distinctive character, merely descriptive, exclusively the shape of goods, misleading, customary in the current language, contrary to public order or morality, official symbol covered by Article 6ter of the Paris Convention, or containing or consisting of a geographical indication for wines or spirits, where the trademark relates to wines or spirits not having this origin. Relative grounds for refusal are contained in Art 44 IPA. However, SIPO does not perform an ex officio examination as to earlier rights.
As a general rule, national trademark applications must be filed in the Slovenian language. However, they may also be filed in a foreign language, provided that it includes at least the indication of the right requested, and the indication allowing the applicant to be contacted by the Office, in the Slovenian, English, French or German languages (Art 81 of IPA). The translation of the application into the Slovenian language is to be filed within three months.

International Priority may be claimed on the basis of a Slovenian application. The application is examined as to formal requirements and for absolute grounds for refusal. If the trademark is accepted for registration, the application is published for opposition in the Official Bulletin. If no opposition is filed within three months of publication, the trademark is registered.

It is interesting to note that CTM owners or applicants are entitled to file an opposition on the basis of their CTM registration/application, provided that an identical national application is filed in Slovenia within the opposition period (Art 139 of IPA).

The registration is valid for 10 years, and can be renewed every subsequent 10 years, upon payment of the relevant renewal fee. Actions for declaration of nullity of a trademark (absolute grounds – Art 114 IPA), for its removal (bad faith, liability to mislead the public, on relative grounds or on the grounds that the trademark has become the common name in the trade – Art 119 IPA), or cancellation on grounds of non-use (Art 120 IPA), are to be filed with the court.

About the author

Ignacio Lázaro (mail@petosevic.com) is a trademark attorney with SD PETOSEVIC, a Brussels-based intellectual property firm that specializes in rights protection in the 22 countries that emerged from the breakup of the former USSR, Yugoslavia and Czechoslovakia. Mr Lázaro concentrates his practice in the area of intellectual property counseling in Eastern European countries, advising on both contentious and non-contentious issues with a particular emphasis on trademarks.