Nationalization of European Patents

Authored by Dr. Karel Cermák Jr,.Ph.D.,LL.M.

Effective as of July 1,2002,the Czech and Slovak Republics are parties to the European Patent Con- vention.Since that date, it has been possible to designate the Czech Republic and/or the Slovak Republic in the European patent application as countries where the European patent should be effective. European patents designating the Czech or Slovak Republics shall be automatically effective in the territories of the Czech or Slovak Republic, subject,however, to the condition of nationalization.

The nationalization of European patent means that the letters patent must be translated into local language and published by the local Patent Office (the Industrial Property Office). Also, the patentee must inform the local Patent Office on an address in the Czech Republic for delivery of official documents regarding the European patent. The translation of the European patent into Czech language must be submitted to the Czech Industrial Property Office within 3 months as of the date of publication of the mention of the grant of the European patent in the European Patent Bulletin. If the translation is not submitted within such term, it is still possible to submit it within an additional term of another 3 months, subject, however, to the payment of a special government fee.

If the translation is not submitted within one of these terms, the European patent is regarded as having never been effective in the territory of the Czech Republic.

For maintenance of European patent in the Czech Republic, special maintenance fees must be paid to the local Industrial Property Office. Atranslation of the European patent must to submitted to the Czech Industrial Property Office for publication also in cases when the European patent has been amended as a result of revocation proceedings.

European patent applications published by the European Patent Office are also subject to the obligation of translation into local language. However, unlike in case of granted European patents, it is required to submit a translation of patent claims only. If the translation of the claims of a published European patent application designating the Czech Republic is not submitted to the local Industrial Property Office and if it is not published in the local Patent Bulletin, the patentee may not claim a right to an adequate compensation for unauthorised use of the patent by third parties before the date it is granted. On the other hand, if the translation of the claims of such European patent application is published, the patentee may, provided that the patent is granted, require an adequate compensation for the use of the patent during the period before the day of grant of the patent from any person having done so without the permission of the patentee.

The situation in Slovakia is analogical to that in the Czech Republic.

Cermák Hoøejš Myslil provides any support and assistance in connection with the nationalization of European patents and patent applications in the Czech and Slovak Republics, including but not limited to the preparation of translations, communication with the local patent offices and payment of maintenance fees. For further info please contact Dr.Karel Cermák or Dr.Jan Matìjka.

New Civil Code Being Prepared

Authored by Dr. Karel Cermák Jr,.Ph.D.,LL.M.

Within the framework of legislative changes that should set up entirely new fundaments for the system of private law in the Czech Republic, the Czech government is preparing a bill for the new Civil Code to replace the existing Civil Code dating back to 1964. The bill should be submitted to Parliament for voting before the end of this year. The new Civil Code is meant to be a new core-bone of the system of law, substituting not only the now effective Civil Code, but also important parts of the Commercial Code, in particular the law of obligations, and reducing the subject-matter of the new Commercial Code which is being prepared at the same time, to the regulation of the law of companies and some special issues of business law. The new Civil Code should be based in particular on the draft of new civil law prepared by leading lawyers of the Czechoslovak Republic (1918 – 1938) in 1937 to replace the then valid General Civil Code (ABGB)of 1811.Despite its quality, this draft has never been enacted due to the political development (German occupation in 1939,communist coup d ’état in 1948). Instead, Communist rulers enacted two completely new Civil Codes in 1950 and in 1964, dismantling the traditional system of private law rooted in Roman and Austrian law. The Civil Code of 1964 is, after dozens of amendments, still in force today.

The new Civil Code should implement the directives and regulations of the European Union in the area of private law (consumer contracts, distance contracts,general terms and conditions, time-sharing etc.) into the Czech legal system. It partly seeks inspiration also in some foreign Civil Codes (in particular in the Austrian General Civil Code of 1811), taking into consideration the developments of civil law abroad in the past decades (Quebec,the Netherlands).

So far, the general part of the draft Civil Code has been published and it is being discussed among the professional public. Some of the proposed provisions are highly criticised by a part of the legal doctrine for conceptual misplacements and a lack of internal coherency.

New Trade Marks Act Expected

Authored by Dr. David Štros

New Czech Trade Marks Act is expected to be passed shortly. The Act should fully replace the currently effective Trade Marks Act 137/1997 Coll., the reason for this being the expected accession of the Czech Republic to the European Union, which has as its consequence the need to harmonise the national legislation with the EU legislation and to connect the national trade mark protection system with the Community Trade Mark protection system.

With the accession of the Czech Republic to the European Union, there will in fact be three types of trade mark protection available for the territory of the Czech Republic:

-the traditional national trade mark registration, obtained at the Czech Patent Office;

- the international registration done through the Madrid System;

- the Community Trade Marks, obtained at the OHIM in Alicante.

The new draft law will be forwarded to the Czech Parliament for discussion and voting for the second time shortly. The most important new features of the draft Trade Marks Act are:

- the possibility to obtain a trade mark also by subjects not carrying out any business activities (such as non-profit organisations, municipalities etc.);

- the possibility to obtain trade mark protection for mere colours;

- the Community trade mark will be effective also in the Czech Republic;

- the introduction of the well-established trade mark (which is not identical in its effects with the well-known trade mark);

- the Czech Patent Office will have the discretion to refuse to register a trade mark application, which was obviously filed in bad faith;

- besides the possibility to file opposition against a published trade mark application, the draft Trade Marks Act introduces a new institute called "the observations to the registration of the trade mark ", by means of which third persons may file his/her observations to the trade mark application; the person who files the observations will not become a party to the application proceeding and the Czech Patent Office will not issue a separate decision on the observations; the observations may not be filed on any of the opposition grounds as listed in the law;

- the possibility to file opposition against a published trade mark application filed by an unfaithful agent within the meaning of Article 6septies of the Paris Union Treaty;

- the possibility to file opposition against a published trade mark application, if the opponent is of the opinion that the trade mark application was filed in bad faith;

- the possibility to claim damages and appropriate satisfaction for infringing acts done by third parties after the publication of the trade mark application before the trade mark is registered;

- the Town Court in Prague will be appointed as the first instance court for matters concerning Community trade marks within the meaning of Article 92 of the Regulation No.40/94 EC; - it will be possible to file Community trade mark applications with the Czech Patent Office.

The chapter XII of the draft law deals with Community trade marks, the interplay of Community trade marks and existing national trade marks, including the way how possible conflicts of existing rights should be solved. The main feature is that with the day of the accession of the Czech Republic to the European Union, the existing Community trade marks will be automatically extended to the Czech Republic. It is expected that the extension of existing Community trade marks will lead to conflicts between the Community trade marks and the trade marks already existing in the Czech Republic, or even trade mark applications filed in the Czech Republic before the accession date.

In case of a conflict of older trade mark rights existing in the Czech Republic and the Community trade mark extended automatically with the accession to the Czech Republic, the owner of a Czech national trade mark or of an international trade mark effective in the Czech Republic, the application for which was filed in good faith before or which has a priority dated before the accession to the European Union, will have the possibility to:

- demand in a court action that the infringement of his/her trade mark rights be prohibited and the damage caused by the infringing activities be made whole; he may also claim appropriate satisfaction, including monetary compensations;

- demand information about the origin of the goods, which should be introduced onto the market and which are marked with his/her trade mark;

- demand in a court action that the infringing goods and services be withdrawn from market and the infringing goods be destroyed; the owner of the trade mark may further demand the materials or tools,which are or could be used in the infringing activities be destroyed.

The owner of the older Czech national trade mark or the older international trade mark may take steps against the extended Community trade mark,if his trade mark is identical with or similar to the Community trade mark and is registered for identical or similar goods or services, or if there is a likelihood of confusion or association between the trade marks based on the similar or identical character of the trade marks and the respective goods and services for which they are registered, or if the older identical or similar Czech national trade mark or the international trade mark enjoys the status of the well-established trade mark and the use of the Community trade mark would take undue benefit from the distinctive character or well-established character of older identical or similar Czech national trade mark or international trade mark.

In order to avoid any future conflicts, we would recommend to the owners of existing Community trade marks to check the status of their mark in the Czech Republic and possibly to take steps which could prevent any bad faith filings done before the accession date.

Our clients will be informed in due time as soon as the new Trade Marks Act has been passed.

European Patent Convention News

Romania has joint the European Patent Organisation and it has become bound by the European Patent Convention as from 1 st March 2003.European patent applica- tions and international applications (PCT) designating the European patent filed after 1 st March 2003 automatically include the designation of Romania. With the entry into force of the European Patent Convention in Romania, the extension agreement between the European Patent Organisation and Romania terminates.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.