FAQ - Frequently Asked Questions - Trade marks
What kind of sign can constitute a trademark?
A trade mark may consist of any sign, in particular words, including personal names, drawings, letters, numerals, the shape of goods or the shape of their packaging or sounds, provided that the sign is capable of distinguishing the goods or services of one person from those of another and is capable of being expressed in such a way as to enable the competent authorities and the public to determine clearly and precisely the subject-matter of the protection. The following types of trade marks may be entered in the register of trade marks: word, figurative, spatial, positional, design, a trade mark consisting exclusively of one colour or a combination of colours, sound, motion, multimedia, holographic or other, provided that it is suitably expressed and clearly and accurately reproducible.
How long is a trade mark valid for, and what do I need to do to renew it?
The validity of the registration of a trade mark shall be ten years from the date of filing of the application. On application by the proprietor of the trade mark or the pledgee (filed not earlier than in the last year of the validity of the registration, but not later than 6 months after the expiry of the validity), the Office shall renew the registration of the trade mark for a further period of ten years. The application shall be accompanied by the payment of the administrative fee pursuant to Act No 145/1995 Coll. on administrative fees, as amended, to the account of the Office.
If a word or sign is protected by a trade mark, will that word or sign be protected from use by another entity?
Without the consent of the proprietor of the trade mark, third parties may not use in the course of trade a sign identical or similar to the proprietor's trade mark for identical or similar goods or services for which the trade mark is registered, on the ground that there is a likelihood of confusion on the part of the public. The proprietor of the trade mark shall be entitled to use the ® sign together with the trade mark.Trade mark disputes shall be heard and determined by the courts. Where there has been an unlawful interference with trade mark rights, the proprietor of the trade mark shall have the right to have the infringement or threatened interference enjoined and the consequences of the interference remedied; he may seek appropriate relief, which may include monetary compensation.
Is it possible to protect a company's business name with a trade mark? How should I proceed?
A trade name can be protected by a trademark as a sign to be used on products, advertising materials or in relation to the services provided. An application for registration of the trade mark must be filed with the register, listing the goods and services protected by the mark together with the required representation/sign.A trade name is the name under which an entrepreneur carries out legal acts in the course of his business and which also distinguishes him from other persons. It is always associated with the designated entity (natural or legal person) and is created and extinguished with it. The legal regulation of the business name is enshrined in Act No. 513/1991 Coll., the Commercial Code. The registration of a business name in the commercial register is not within the competence of the authority.The function of a trade name is to distinguish different entrepreneurs, but the main function of a trade mark is to distinguish goods or services from different entities, i.e. to identify the goods or services of one person in relation to the goods or services of other persons in the eyes of the consuming public.
How are the goods and services to be included in an application for registration of a trade mark classified?
Since the main function of a trade mark is to distinguish goods and services coming from different entities, it is necessary to indicate in the application for registration of the trade mark the specific goods or services for which the trade mark is to be registered. The list of goods and services must be drawn up in accordance with the International Classification of Goods and Services currently in force for the purposes of registration of the trade mark. In order to speed up the registration procedure, the applicant may use the online application for the creation of the list of goods and services located on the external website https://www.ezts.sk
How can an accelerated procedure for the publication of a trade mark application be achieved?
In order to make the publication of the trade mark application as soon as possible, as a rule within 30 working days from the filing of the application, and at the same time as securely as possible, the following conditions must be fulfilled: the application for registration of the trade mark in the register must be filed via the electronic form of the Office of the Office of the Slovak Republic on the portal of electronic services https://mef.indprop.gov.sk/ipointupv/pages/Default.aspx
The applicant or his representative must have an electronic mailbox on the slovensko.sk portal activated for delivery.
The applicant shall use the tool available at https://www.ezts.sk to draw up the list of goods and services, which is a legal condition of the application.
The administrative fee for the filing of the application shall be paid by bank transfer within a period of no later than three working days from the date on which the Office sends the applicant/representative a confirmation of the filing of the application. Payment shall be made by entering the payment details communicated to the applicant in the acknowledgement of the filing of the application, as soon as the application has been received by the Office.If the applicant will claim in his application the right of priority from the first application for a trade mark under the International Convention, he must submit a document proving this fact together with the application.Once these steps have been completed, the examiners will examine the application within a very short time and, if the application fulfils all the statutory conditions for publication, the Office will issue an order for publication of the application within 15 working days from the date of filing of the application, which will be the trigger for subsequent processing of the application for publication in the Bulletin of the Office of Trade Marks and Designs.
Is it possible to find out whether an application has passed the accelerated enrolment procedure?
The fast-track procedure can be verified in the Office's web register by clicking on the relevant application log. If the log shows the entry "instruction for publication" within 15 working days of the filing of the application, this means that the application in question has fulfilled the conditions of the accelerated procedure for the publication of a trade mark application, and if no observations or objections to registration are filed after the date of publication of the application in the Office's Bulletin within the statutory time limit of three months after publication, such application will be entered in the trade mark register much more quickly compared to other applications.
Is it possible to apply for protection of two different signs in one trademark application?
This is not possible, because according to Act No. 506/2009 Coll. on Trademarks, a trademark application may cover only one sign.
Can a trade mark proprietor also assert his rights in relation to the use of an internet domain?
Yes, in the territory for which the trade mark is registered, if the designation of the internet domain is identical or similar to the trade mark registered in the trade mark register and if the use of the internet domain is connected with the designation of the goods or services for which the trade mark in question is registered in the trade mark register. The acquisition of domain names and their use is not regulated by the State; we do not have a public domain name registry. In the field of domain names, the principle of the right of priority applies. No two domain names can be the same in the entire network of domain names. A domain name which uses a word which is the dominant element of a trade mark registered in the trade mark register in Slovakia or of an internationally protected trade mark or trade mark of the European Union is deemed to conflict with the right of the trade mark owner.
Where and how can I apply for an EU trade mark?
A European Union trade mark can only be filed directly with the European Union Intellectual Property Office (EUIPO).
Any of the following methods may be used to file an application:
- electronic filing: online application
- sending by ordinary postsending by private delivery service
- handing in the application in person during office hours at the Office's Registry
- E-mail submission is not possible!
The cheapest, quickest and easiest way to file a European Union trade mark application is to file online directly on the EUIPO website.
Can I file an EU trade mark application in Slovak, or in which language must it be filed?
An EU trade mark application can be filed in any of the 23 languages of the European Union, including Slovak. In addition, a second language must be chosen on the application form, which must be one of the five languages of the Office: English, French, German, Spanish or Italian. The second language serves as the language to be used in the event of opposition or revocation or invalidity proceedings.
If my mark consists of text and a pictorial element, do I protect both the text and the pictorial element separately?
The applied-for sign is protected as a whole after registration in the trade mark register.
What is the fee for filing a trademark application?
The fee for filing an application for an individual trade mark in three classes of goods or services is 166.- €. Further information can be found in the section Administrative fees.
What is the filing fee for an EU trade mark application?
Podanie prihlášky ochrannej známky EÚ je spoplatnené základným poplatkom: 850 € za podanie prihlášky on-line vrátane jednej triedy výrobkov alebo služieb alebo 1 000 €, ak podávate papierovú prihlášku len s jednou triedou výrobkov alebo služieb.
V obidvoch prípadoch, ak prihláška zahŕňa viac ako jednu triedu výrobkov a/alebo služieb, za druhú triedu je poplatok 50 € a za každú ďalšiu 150 €.
Can I apply to add another class to the list of goods and services after filing the application?
The original list of goods and services included in a trade mark application cannot be extended, only limited. In other words, no additional goods or services can be added to an application already filed. The possible need to protect additional goods or services (not included in the registered trade mark) with a trademark can only be addressed by filing a new trade mark application.
What is the basic difference between an EU trade mark and an international trade mark?
A European Union trade mark provides protection within the unitary territory of the European Union and is applied for at the EUIPO in Alicante. If registered in the EUIPO trade mark register, protection lasts for 10 years from the date of filing of the application and can be renewed every 10 years. The international trade mark meets the needs of those applicants who need to protect their sign also in the territory of countries outside the European Union, in the Contracting States of the Madrid Union. An application for international registration is filed with the Industrial Property Office of the Slovak Republic. In the application, the applicant shall indicate the countries in which protection is sought, and it is possible to apply for extension of protection in other countries of the Madrid system at a later date. Each country examines the application according to its own legislation and, on the basis of the examination, decides whether to grant or refuse protection. An international trade mark is valid for 10 years from the date of registration and can be renewed every 10 years.