What Is a Trademark?
Sign which Can Be Registered as a Trade Mark
A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
How to Obtain a Trade Mark ?
To register a sign a duly completed trade mark application shall be filed with the Industrial Property Office of the Slovak Republic. It may be done by a natural person or a legal entity ("an applicant") and the application shall contain:
request for the entry of a sign into the Register; name, surname and permanent address (natural person); name or a trade name and headquarters (legal entity);
wording or representation of a sign; in case of a three-dimensional sign its surface representation,
list of goods or services in respect of which the registration is being requested; the sign shall be classified in accordance with the international classification of goods and services;
in case of a collective trade mark an application shall contain a written agreement concluded among members of an association and the list of members which are entitled to use a collective trade mark;
signature of an applicant or his representative.
What Does a Trade Mark Application Proceedings Involve?
An applicant shall enjoy the priority right by filing a trade mark application against any person who subsequently files an application for registration of a trade mark identical or confusingly similar to that sign and for identical or similar goods or services. The Office shall examine whether the application complies with the conditions laid down by the Act No. 506/2009 Coll. on Trade Marks.
Before the entry of a trade mark into the Register, any person shall be entitled to submit written observations based on the grounds under the Section 5 or 6; the Office shall take into account the observations in deciding on the entry of a sign into the Register. Person who submitted observations shall not be a party to the proceedings. If an application meets requirements for registration, the Office shall publish the application in the Official Gazette. If within the period of three months from the publication no opposition against the entry of a sign into the Register is filed, the Office shall register the trade mark.
What is an Opposition Proceeding ?
The opposition proceeding is an institute of the trade mark law enabling application of rights of a third party that could be affected by registration. After publication of an application in the Official Journal, a person referred to in the Section 7 of the Trade Mark Act shall be entitled to file oppositions to registration within the period of three months from the publication date.
On the basis of the justified oppositions, the Office shall examine, whether the registration of the trade mark application is not in contradiction with provisions of the Section 7 of the Trade Mark Act. If the Office ascertains that the trade mark application is in conflict with the defined conditions, it will be rejected.
What Is the Term of Protection for Registered Trade Marks ?
The term of protection for a registered trade mark is ten years from filing an application with the Office and at the request of a trade mark proprietor for renewal of a registration the term of protection for a trade mark shall be extended for additional ten years.
What Are Rights Conferred by a Trade Mark?
A trade mark proprietor shall have an exclusive right to use a trade mark in relation to his goods or services, for which a trade mark is registered.
A trade mark proprietor shall be entitled to use the sign ® with the trade mark.
The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade a sign
identical with a trade mark for goods or services identical with those, for which a trade mark is registered;
if because of its identity with or similarity to the trade mark and the identity or similarity of goods or services there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association of the trade mark;
identical with or similar to the trade mark with the reputation in the territory of the Slovak Republic, not registered for identical or similar goods or services, if the use of that sign without due case takes unfair advantage of, or is detrimental to the distinctive character or the repute of trade mark.
If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work gives in which the trade mark is being reproduced so that it gives the impression that it constitutes generic name of goods or services, the publisher of the work shall, at the request of the proprietor of the trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark.
In case of trade mark infringement, the proprietor of the trade mark shall be entitled to apply for the prohibition of infringement and to remedy the consequences of infringement, to claim an appropriate satisfaction, including pecuniary satisfaction. The right to claim the surrender of unjustified enrichment and to claim damages shall not be affected.
Other Facts Concerning Trade Marks
A trade mark may be transferred to any person in respect of all or some of goods or services for which the trade mark is registered. The transfer of a trade mark shall be made in writing by means of a contract. Right of lien on the trade mark may be established. The Office shall register an establishment or expiration of the right of lien on the trade mark on the request of pledge creditor or pledge debtor.
Collective trade mark is a trade mark capable of distinguishing goods or services of members or an association of natural or legal persons with legal identity from goods or services of other persons. Persons and legal entities not having their residence or headquarters in the Slovak Republic must be represented in proceeding on a trade mark before the Office by an authorised representative (Act No. 344/2004 Coll. on Patent Representatives).