Trade Marks 2022 Comparisons

Last Updated March 01, 2022

Contributed By Čermák a spol

Law and Practice

Authors



Čermák a spol is a boutique firm specialising in intellectual property and related fields. It is active in the prosecution of patents, where through its patent attorneys it represents clients before the Slovak Industrial Property Office, the EPO and other patent offices through partner offices, and after the grant of a patent, it is able to both defend against validity challenges to the patent, and enforce the patent against infringers through its attorneys-at-law. With over 40 employees and numerous external assistants and partner offices, it is one of the largest IP firms operating in Slovakia, where it has a dedicated partner office. It has established contacts in other jurisdictions around the world. Given the firm's long-term presence on the market, it has had the opportunity to represent most of the key players in all fields of technology, including most of the leading companies in the pharmaceutical, chemical, telecommunications or mechanical engineering sectors.

Trade marks are governed in particular by the Slovak Act No 506/2009 Coll. on Trade Marks (the “Trade Marks Act”).

Case law is not binding in the Slovak Republic. Nevertheless, according to the legal principle of legal certainty all similar cases must be considered in a similar manner. Therefore, the Slovak Industrial Property Office (IPO) and courts may use interpretation of law provided by European Court of Justice, the Slovak Supreme Administrative Court and the Constitutional Court or by other relevant authorities when they deem it to be applicable.

The Slovak Republic is a party to:

  • the TRIPS Agreement;
  • the Paris Convention for the Protection of Industrial Property (the "Paris Convention");
  • the Convention establishing the World Intellectual Property Organisation;
  • the Madrid Agreement and Madrid Protocol concerning the international registration of trade marks;
  • Trade mark Law Convention;
  • the Singapore Trade mark Law Convention; and
  • the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of trade marks.

Slovak law recognises following types of trade marks:

  • word trade mark in regular type or in the accompanying design;
  • figurative trade mark;
  • spatial trade mark;
  • holographic trade mark;
  • sound trade mark;
  • positional trade mark;
  • trade mark of design;
  • trade mark consisting of one colour without outlines or a combination of colours without outlines;
  • motion trade mark; and
  • multimedia trade mark.

In addition to these types of trade marks, Slovak law also recognises collective trade marks which are owned by an association or a legal entity governed by public law. Neither certification trade marks nor common law trade mark rights are recognised.

Apart from the Trade Marks Act, special legal protection is provided for the Olympic emblem and other Olympic designations by Slovak Act No 440/2015 Coll on Sports.

Trade marks which are not yet registered in the Slovak Republic can be protected if they are well-known foreign marks pursuant to the Article 6 bis of the Paris Convention.

Registered trade marks are valid for ten years from filing of their application. For information on a renewal of a term of protection, see 3.3 Term of Registration.

A trade mark owner is not entitled to prohibit a third party a use of a trade mark for goods which have been put on the market under such trade mark, either by the owner or with an owner’s consent, in the state which is a contracting party to the Agreement on the European Economic Area. This does not apply if there are legitimate reasons for the trade mark owner to prohibit the use of the trade mark, in particular if conditions of goods was changed or impaired after it had entered the market.

Once a trade mark is registered, its owner has an exclusive right to use the trade mark in connection with registered goods and services and the owner can use the ® symbol in connection therewith. However, it is not required that the trade mark owner uses the ® symbol or any other symbol to denote that a trade mark is registered or existing.

Slovak trade marks can be assigned to another party for all or a part of registered goods and services by an assignment agreement in writing. There is no maximum limit of assigning in relation to a trade mark. A previous IPO approval of an assigning a trade mark is not required. 

A trade mark owner can grant a licence to a third party to use the trade mark for all or a part of the registered goods and services covered by a licence agreement. Previous IPO approval is not required. 

Slovak law allows a trade mark owner to grant either an exclusive or non-exclusive licence to the trade mark. If the exclusive licence is granted to one party, it cannot then be granted to another party during the duration of the agreement. There is no limit on granting multiple non-exclusive licences to a single trade mark. The parties can enter into a licence agreement for limited or unlimited time – in such case, a termination of a licence would not be tied to a specific time period expiration.

Neither an assignment nor a licence needs to be registered or recorded with the IPO. Nevertheless, both the assignment and the licence are effective in relation to third parties since the day of their recordal in the Trade Marks Register. It is thus highly recommended to record the assignment or the licence in the Trade Marks Register as soon as possible so third parties can follow the actual status of the trade mark ownership/authorisation. The only risk that exists during the gap between the assignment or licence taking place and its registration can be providing proof that the assignment or the licence exists.

There are no other special requirements for a licence or an assignment to be valid. 

It is possible to assign a trade mark application or to grant a licence in relation to such application during a trade mark registration proceedings.

A Slovak trade mark or trade mark application can be given as a pledge. The IPO will record the pledge based on the request of the pledge lender evidencing the establishment of the pledge for the trade mark or trade mark application. The agreement establishing the pledge has to be in writing.

A Slovak trade mark and trade mark application can be also levied in execution. The IPO will record if the trade mark or trade mark application is levied in execution based on the execution order evidenced by a notice of the execution beginning and a list of rights which also includes a specific trade mark or trade mark application.     

A trade mark owner acquires trade mark rights after a trade mark is registered with the Trade Marks Register of the IPO. It applies retroactively from the date when the trade mark application was filed. There are no different standards for registering different types of trade marks. All types of trade mark applications have to be filed separately. It is not possible to apply for multiple trade mark registrations in one application.

The IPO maintains the Trade Marks Register which is publicly available. Moreover, data recorded in the Trade Marks Register are available online on the IPO's website.

The Trade Marks Register is the only and principal source that provides information on national trade mark applications and registered trade marks. It is a common practice to search for a prior trade marks before applying to register a trade mark with the IPO. It is also highly recommended to search for a prior trade marks in the European Union Intellectual Property Office (EUIPO) and World Intellectual Property Organization (WIPO) registers before applying to register a trade mark. 

A registration of a trade mark is valid for ten years from the date when a trade mark application was filed. A trade mark registration’s term of protection can be renewed for further period of ten years by a trade mark renewal application filed by a trade mark owner, a pledgee or any other person or entity who establishes a relevant legal interest. A renewal application cannot be filed before a last year of a trade mark’s term of protection. Once a trade mark enters into the last year of its term of protection, a renewal application can be filed no later than the last day of its term of protection, ie, before it protection expires.

If a renewal application was not filed during the “standard” period described above, such renewal application can be filed in an additional period of six months beginning on a day which follows a last day on which the renewal application could have been filed during the “standard” period.

Partial updates of a registered trade mark are allowed, ie, a list of registered goods and services can be reduced at any time, however, an extension to more classes is not allowed. A registered trade mark designation cannot be subsequently amended.

A trade mark registration procedure starts with a trade mark application being filed with the IPO.

According to the Trade Marks Act, a trade mark application must meet following material requirements:

  • an identification of the applicant (and identification of the applicant’s representative if the applicant is represented);
  • a designation of the applied mark;
  • a list of goods or services applied for; and
  • a signature of the applicant or the representative.

A trade mark can be registered by individuals, legal entities or associations of individuals or legal entities. For types of signs that can be registered, see 1.2 Types of Trade Marks.

An applicant cannot apply for multiple designations in a single application for registering a Slovak national trade mark. Nevertheless, applications for multiple classes are allowed.

Slovak law stipulates no requirements for an applicant to use a mark in applicant’s commercial activities before a registration is issued.

Slovak law does not allow the registration of series marks. Each trade mark application must be filed separately.

If a sign in a “new” trade mark application is identical with an earlier trade mark or an earlier trade mark application and it is applied for same goods or services, the IPO will notify an earlier trade mark owner or an applicant who filed the earlier trade mark application about the “new” trade mark application.

The IPO does not automatically consider prior rights in any other way except for purposes of the above-mentioned notification.

A third party can participate in trade mark registration proceedings by filing an opposition if such party has a required legal standing, eg, a third party holds rights to an earlier trade mark, or if an applicant is a business representative of such third party filing a trade mark application without the third party’s consent.

Anyone file observations against a trade mark application’s registration; no special legal standing is required therefor. Nevertheless, a person who filed observations is not a party to the registration proceedings. The IPO will inform the applicant about observations and it will allow the applicant to respond thereto. The IPO will also inform the applicant and the person/entity who filed observations about the result of its consideration of such observations.

After filing a trade mark application it is allowed to amend an applicant’s first name, surname, company name, permanent address or a registered seat and only in case if such amendment does not change an overall character of a designation. Furthermore, an applicant can also reduce a list of goods and services applied for. The above-mentioned amendments are subject to a review and approval by the IPO. 

An applicant can divide a trade mark application consisting of multiple goods or services before the registration is finished. In case of an application’s division, prior rights and a date of an original trade mark application’s filing are preserved for divisional trade mark applications.

The IPO decides issues relating to incorrect information in a trade mark application.

See 4.6 Revocation, Change, Amendment or Correction of an Application for information on amending incorrect information in a trade mark application.

The IPO shall refuse to register a trade mark application due to following absolute grounds, including:

  • a lack of a distinctive character;
  • a sign may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of goods or of rendering of services, or other characteristics of goods or services;
  • a sign is customary in the Slovak language or in bona fide and established practices of the trade;
  • a conflict with principles of morality;
  • a deception of the public; and
  • an application is not filed in good faith.

For example, an IPO’s objection due to a lack of a distinctive character can be overcome by either providing strong arguments which will convince the IPO that its conclusions are incorrect because a considered mark is sufficiently distinctive (eg, by referring to a new, relevant and applicable opinion in case law) or by providing evidence of its prior use (ie, before filing a trade mark application) establishing that the public connects the mark with applicant’s goods and services.

The IPO will send a written notice to an applicant if it finds reasons to dismiss a trade mark application on absolute grounds. The IPO will set a deadline for the applicant to submit statements and evidence necessary for overcoming IPO's objections. If the applicant fails to over any of IPO’s objections then the IPO will dismiss the application in its entirety and the applicant can file an appeal against such decision.

If any issues arise before a decision on a trade mark registration is reached by the IPO, an applicant will be served with an IPO’s written notice allowing the applicant to respond thereto.

The applicant can file an appeal against the IPO’s decision dismissing a trade mark application with the President of the IPO. If unsuccessful, the applicant can file an administrative action to the Administrative Court and the court’s decision can be further challenged in proceedings before the Supreme Administrative Court and, thereafter, the Constitutional Court.

The Slovak Republic participates in the Madrid system and provisions of the Madrid Agreement and Madrid Protocol are directly applicable.

International registrations are subject to the IPO review on absolute grounds as Slovak national trade mark applications.

A statutory deadline for filing an opposition to a trade mark application is three months after the application is published in the Trade Marks Register. This deadline cannot be extended.

Legal grounds for filing an opposition can be a likelihood of confusion between an application and an earlier right and goods and services applied for and those protected by an earlier right. The earlier right is in particular a registered trade mark, an unregistered generally recognised mark, a trade mark generally renowned in the Slovak Republic, an industrial property right and a copyright.

Moreover, a person or an entity whose rights are affected by a trade mark application can file an opposition if an applicant did not file its trade mark application in good faith. Also a natural person can oppose a trade mark application on grounds of such application affecting its personality rights.

Dilution is not as such recognised by Slovak law as grounds for filing an opposition. However, case law recognises a dilution as a detrimental effect to a trade mark’s reputation or its distinctive character. Establishing a dilution can be used, ie, for establishing a harm or a threat of harm to the trade mark with a reputation.

An owner or a holder of an earlier right can file an opposition. Moreover, a natural person or a legal entity affected on its rights by a trade mark application filed in bad faith and a natural person affected on its personality rights by a trade mark application may oppose a trade mark application. No legal representation is required for opposition proceedings.

The fee for filing an opposition amounts to EUR50 and it is payable in full upon filing the opposition. Should a party fail to pay the fee, the IPO will send it a written notice with a deadline for making the payment.

Opposition proceedings are heard by the IPO. These proceedings are resolved through motion practice usually without any oral hearings.

Opposition proceedings are initiated by an opponent’s filing of an opposition with the IPO. An opponent can submit evidence only within the deadline for filing an opposition.

After receiving an opposition, the IPO will serve it on an applicant and it will allow the applicant to make a response. The deadline for applicant’s response can be extended. The opponent is not notified of the applicant’s response and the response is not served on the opponent unless the opponent expressly asks the IPO for a copy. The same applies to all further submissions of both parties in IPO’s first instance proceedings.

See 4.10 Remedies against the Trade Mark Office.

In general, there is no statute of limitation for filing a revocation action or a cancellation action. There is an exception according to which a revocation action based on a court decision issued on specific grounds (eg, such as that a use of a trade mark amounts to a conduct in unfair competition) must be filed within six months from the day when the underlying court decision becomes final.

It must be noted that the grace period for a revocation claim for a trade mark’s non-use amounts to a consecutive period of five years. Therefore, this claim becomes available after five years from the day of a trade mark’s registration.

The following legal grounds cover trade mark revocation or cancellation:

  • it has not been used for a consecutive period of five years preceding the day when the request was filed;
  • it has become customary for goods or services for which it is registered;
  • it has become deceptive in relation to goods or services for which it is registered; and
  • a final court decision finding that a trade mark use is detrimental in manners stipulated by law, eg, that such use amounts to a conduct in unfair competition.

A trade mark can be invalidated due to being filed contrary to absolute grounds or upon a request by a person entitled to file an opposition against it.

A revocation/cancellation request may be filed by any third party.

An invalidation request filed by a person that is entitled to file an opposition may only be filed by a person enjoying specific earlier priority rights, see 5.1 Timeframes for Filing an Opposition.

Revocation and invalidation proceedings are heard by the IPO. Remedies described in 4.10 Remedies against the Trade Mark Office apply also to these proceedings.

A trade mark can be partially revoked or invalidated if grounds for such revocation or invalidation are related to some registered goods or services instead to all of them or to the trade mark as a whole.

Claims, statements and evidence in revocation and invalidation proceedings can be amended or supplemented during the proceedings.

A challenged trade mark cannot be amended except for restricting a list of goods and services registered for it, which can be carried out upon a request made by a trade mark owner.

Revocation/cancellation and invalidation actions are heard before the IPO. Infringement cases are heard before the courts, thus these different procedures cannot be heard together.

Fraudulent trade marks can be contested by an invalidation action establishing that such trade marks were filed in bad faith in relation to a plaintiff.

Courts do not automatically consider trade mark claims after an expiration of a relevant statute of limitations; it is up to a defendant to object and establish that a trade mark claim is time-barred.

Unless stipulated otherwise, a general statute of limitations pursuant to either the Civil Code (three years) in B2C cases or the Commercial Code (four years) in B2B cases apply to trade mark claims.

The Trade Marks Act further specifies that claims to damages become time-barred in three years after a plaintiff became aware of a damage and an identity of a liable party or in five years after the damage occurs, whichever expires sooner.

Pre-litigation Phase

As regards a pre-litigation phase (eg, cease and desist letters), it has no bearing on proceedings (such as claims to costs of proceedings) besides the fact that it can be used as an evidence.

Preliminary Injunction

An application for a preliminary injunction is available as a temporary relief (or a permanent relief in specific cases). It must be filed within a reasonable time after a plaintiff becomes aware of an infringement – a precise period is not stipulated, nevertheless, filing the application few months after finding about an infringement is usually acceptable. If the application is granted then a court will order the plaintiff to file an action on merits within a court-stipulated deadline, which is usually 30 days.

Claims from Unregistered Marks

As regards claims from unregistered marks, it must be noted that claims from trade marks infringement cannot be raised from rights to an unregistered mark. However, there is an option to pursue unfair competition claims.

Dilution

There are no specific claims for dilution. However, the jurisprudence considers it to be detrimental to a trade mark’s reputation or its distinctive character and it can be thus used to establish an infringement on rights from a trade mark.

Cybersquatting

According to Article 3 of the Slovak domain authority SK-NIC’s alternative dispute resolution rules domains which are confusingly similar to third parties’ trade marks can be transferred to proprietors’ of such trade marks if a domain holder has no legitimate interest to holding such domain (eg, a plaintiff owns a trade mark, which is confusingly similar to the holder’s domain) and the domain was not registered, gained or used in good faith, ie, the holder registered the domain for purposes of hindering plaintiff’s business activities, for its sale/offer to a plaintiff, or if the domain was not used for two years.

A trade mark claim can be raised by a trade mark proprietor. A non-exclusive licensee can file an action for trade mark claims only with a written consent of a trade mark proprietor. An exclusive licensee can file such action only in case that the exclusive licensee sent a written notice to a trade mark proprietor about an infringement and the trade mark proprietor failed to file an action in a reasonable period. Either of above-mentioned persons can join proceedings initiated by one of them as an intervenient.

A defendant is a third party allegedly infringing on a right from a trade mark.

Class actions (as understood, eg, in certain common law jurisdictions) are not available under Slovak law since all plaintiffs have to be individually identified and they all have to file a lawsuit or join a lawsuit filed by a fellow plaintiff.

There are no prerequisites to directly filing a lawsuit without first engaging an alleged infringer. A pre-litigation phase (warning letters, mediations, etc) has no bearing on proceedings on the merits or costs of such proceedings besides the fact that anything from the pre-litigation phase can be used as evidence.

It must also be noted that an abuse of own’s rights does not enjoy a legal protection.

An action on the merits must comprise raised claims, factual statements and it must refer to evidence establishing such factual statements and necessary evidence must be presented.

A defendant may file an action for revocation or invalidation of a plaintiff’s trade mark at any time. After a court issues a final decision on the merits, a defendant may file a request to reopen proceedings if a plaintiff’s trade mark is revoked with ex tunc effects, ie, as if the trade mark has never been registered.

District Court Banska Bystrica is the first instance court with an exclusive jurisdiction over trade mark cases for the territory of the whole Slovak Republic. Its appellate court is Regional Court in Banska Bystrica. An extraordinary appeal against decisions of the appellate court can be filed with the Supreme Court and, furthermore, a constitutional complaint can be filed with the Constitutional Court.

Reimbursement of costs that arise before filing a lawsuit is not granted in court proceedings unless such costs were efficiently spent for purposes of the court proceedings (eg, costs for obtaining an expert opinion on which a court based its conclusions). Costs relating to warning letters are a typical example of costs which are not reimbursed in proceedings.

Parties in trade mark litigation cases must be represented by an attorney-at-law authorised to provide legal services in the Slovak Republic unless the party is a natural person with a second degree university education in law or a natural person acting on behalf of a legal entity has such education. If a party (a plaintiff or a defendant) fails to obtain the required representation within a deadline stipulated by a court, the court will disregard such parties’ actions.

Courts are not bound by the IPO of the Slovak Republic’s decisions. However, when courts consider claims and evidence similar to those considered by the IPO, they tend to reach similar conclusions.

An alleged infringer can start declaratory judgment proceedings. If a trade mark proprietor files a lawsuit at a later date, a court considering a later infringement case can either wait for a decision in an earlier declaratory case (this would be more common and expected approach) or it can consider such preliminary question on its own without issuing a binding decision on such preliminary question.

A potential defendant can file a protective brief, however, the question of whether a first instance court must consider such brief is still open to interpretation by the Supreme Court and the Constitutional Court. A current practice of Slovak courts is to take protective briefs into consideration.

The Customs Office is authorised to seize goods suspected of infringing on rights from a trade mark. The Customs Office shall destroy seized goods if parties agree therewith or if a court rules that the goods infringe on rights from a trade mark.

General procedural rules apply in trade mark proceedings.

Trade mark cases are decided by legal judges. The Slovak legal system recognises neither technical judges nor a jury.

Judges are assigned to cases in accordance with a work schedule of a given court. Parties can object to a judge presiding over a case on impartiality grounds.

It is necessary to establish that a use of an allegedly infringing sign is detrimental to a trade mark and/or trade mark proprietor’s business activities relating to goods or services protected by a trade mark.

The major factor in determining an infringement is a likelihood of confusion between an infringing sign and an earlier trade mark. The likelihood of confusion can be established after a comparison of marks. A visual, phonetical and semantical comparison of marks is conducted. A similarity between compared marks in any of these three considerations is sufficient for declaring a likelihood of confusion.

In addition to the above, a comparison of goods or services registered for an earlier trade mark and used in connection with an infringing sign must be conducted as well. A lower degree of similarity between marks can be overcome by a higher degree of similarity between compared goods and services and, via versa, a lower degree of similarity between compared goods and services can be overcome by a higher degree of similarity between compared marks.

An overall comparison of marks and goods and services is influenced by other factors such as a reputation of an earlier trade mark and its distinctiveness.

A claim riding on the coat-tails of an earlier trade mark with a reputation must establish the reputation of the trade mark and show the infringer is gaining an unfair advantage from an association with the earlier trade mark. This concept is, to a certain extent, similar to a dilution by blurring or by tarnishment in common law jurisdictions.

A transfer of a trade mark is effective in relation to third parties upon its recording in the Trade Marks Register.

A trade mark owner is entitled to monetary remedies described in 9.2 Monetary Remedies, even if an infringement occurs in the period after a trade mark application has been published and before it is registered. However, the trade mark owner can raise the above monetary remedies claims only after the trade mark is registered.

A priority of an earlier right (both a registered right and an unregistered right) can be invoked in defence against a trade mark infringement claim.

A trade mark proprietor cannot prohibit a natural person to use the defendant’s own first name, surname and address.

Furthermore, a defendant cannot be prohibited to use marks without a distinctive character (descriptive), marks relating to a type, quality, amount, purpose, value, geographical origin, time of goods production or service provision or other property of goods or services.

Moreover, a defendant cannot be prohibited to use a trade mark for purposes of identifying or launching goods or services onto a market as goods or services of the trade mark proprietor, especially if the use of the trade mark is necessary for identifying a purpose of goods or services, in particular when concerned goods or services amount to accessories or spare parts. It must be also noted that establishing an earlier local use of an unregistered mark, which is still used to the same local extent, is also a viable defence.

If an infringement action was filed at least five years after a trade mark’s registration then a defendant is entitled to request that the trade mark owner presents evidence establishing an actual use of the trade mark in the period of five years preceding the action’s filing for goods and services which are covered by the trade mark and on which the action is based or, alternatively, evidence establishing authorised reasons for its non-use. In this context, the trade mark proprietor is entitled to request a prohibition of a mark’s use only to the extent in which the trade mark proprietor’s are not subject to a revocation of a trade mark due to its non-use.

General defences pursuant to the Civil Procedural Code may also apply.

A trade mark owner is entitled to request information regarding the origin and distribution networks of goods or services or circumstances of launching goods or services onto a market from an infringer.

Moreover, during a civil trial a party can ask a court to order to anybody holding relevant evidence to present such evidence to the court.

Parties can ask an expert to provide an expert opinion for them. Such “private” expert opinion can be presented to a court. Alternatively, parties can ask the court to appoint an expert who will provide an expert opinion. Both types of expert opinions are treated equally by courts.

The questions relating to considering an infringement such as a likelihood of confusion, reputation of a trade mark, its distinctive character, etc, are considered exclusively by a court.

An expert is usually used for calculating the damage caused by the infringement of a trade mark right.

A trade mark infringement can constitute a criminal offense pursuant to the Section 281 of the Slovak Criminal Code.

Costs of litigation depends on specific circumstances of a given case, eg, whether damages are claimed, whether an expert opinion must be presented, etc. Assuming that only a trade mark infringement is claimed then a court fee would amount to EUR331.50 and the statutory attorney’s fee (the amount which can be reimbursed in the proceedings if a party prevails) would amount to EUR61.41 for each non-superfluous legal action. The bare minimum legal actions would be drafting and submitting an action on the merits and attending an oral hearing.

It must be noted that attorneys may charge hourly rates, which are usually well above the statutory attorney fee. Moreover, proceedings tend to be more complex with parties exchanging multiple briefs in a first instance proceedings, attending several oral hearing, appealing a first instance decision and exchanging several briefs in appellate proceedings, etc.

A trade mark proprietor can file an application for a preliminary injunction wherein it can be ordered to a defendant to refrain from activities which infringe on a trade mark or threaten such infringement. Alternatively, the defendant can be ordered to pay a security covering damages to a court instead of being ordered to refrain from above-mentioned activities.

In order to be granted a preliminary injunction, a plaintiff must establish an actual infringement of a trade mark or a threat thereof by a defendant and the prerequisite of urgency (filing an application for a preliminary injunction within few months of becoming aware of the infringement) must be satisfied.

A defendant can oppose a preliminary injunction on grounds that evidence presented by a plaintiff does not establish an infringement or a threat of infringement. Moreover, a defendant can file for the preliminary injunction to be dismissed due to new factual circumstances which were not present at the time of a preliminary injunction decision.

If damage is caused to a trade mark owner by an infringement on the owner’s rights from a trade mark then owner is entitled to claim damages including lost profits. If immaterial harm was caused, then the proprietor is also entitled to an appropriate satisfaction which may amount to a cash payment. The proprietor is further entitled to claim recovery of an unjust enrichment.

There are no enhanced damages for the use of counterfeit marks, however, such use may be considered to be a criminal offense punishable by imprisonment or fines paid to the state.

The remedy of impoundment and/or a destruction of infringing goods is available under Slovak law.

A losing party is usually ordered to reimburse a prevailing party’s costs of proceedings, which are enumerated by a court pursuant to evidence provided by a prevailing party. The ratio of costs reimbursement is commonly calculated as a difference between the successful claims of parties. For example, if the prevailing party is successful in 80% of its claims and the losing party is successful in 20% of its claims then a court can be expected to order the losing party to pay 60% (80 – 20 = 60) of prevailing party’s costs of proceedings.

Costs of proceedings usually comprise court fees, attorney fees and expert fees. Attorney fees are calculated as a percentage of a total value of a dispute and they are awarded for each non-superfluous legal action undertaken in the proceedings. Therefore, attorney fees reimbursed in the proceedings may not reflect attorney fees paid by a party, which are subject to a deal between a party and its attorney.

In general, Slovak legal procedures require that a defendant is given an opportunity to participate in proceedings.

However, there is an exemption. If an application for a preliminary injunction is dismissed by a first instance court, the court will serve neither the application nor its decision on a defendant.

If there was a preliminary injunction ordered against a defendant then the prevailing defendant may seek damages caused by such preliminary injunction from a plaintiff.

A prevailing defendant can also seek a reimbursement of statutory attorney fees and court fees.

A trade mark owner can file an application with the Customs Office to take action against infringing goods. If the Customs Office grants such application, the trade mark owner will be referred to as the “decision holder” and the Customs Office will start seizing goods suspected infringing goods. The Customs Office is also authorised to seize suspected infringing goods on its own, ie, without an above-mentioned decision.

After seizing goods, the Customs Office will issue a decision and will send a written or, if practical, electronic notice to the decision holder of the seizure of goods. The decision holder will be given ten business days, or three in the case of highly perishable goods, to oppose the destruction of goods or to state whether seized goods infringe on the trade mark and whether they should be destroyed. A failure to respond is understood as a consent to the destruction of goods.

In the meantime, the Customs Office will announce its decision on seizing goods to the “holder of goods”, ie, a person offering, selling, owning, manufacturing, storing, transporting or keeping the goods in question. The holder of goods has a three-day deadline to appeal the decision.

If prerequisites for the destruction of goods are not met (eg, a holder of goods will oppose the destruction in a timely manner) then the decision holder – the trade mark owner – is ordered to file an infringement action with a court. Failure to do so will result in termination of the goods’ impoundment.

The Trade Marks Act does not offer different remedies for different types of trade marks.

Slovak courts have a statutory obligation to lead parties to a settle their dispute. While a court cannot force parties to settle a dispute, there are statutory incentives for parties to reach a settlement such as a partial reimbursement of court fees.

An out of court settlement can be reached at any time and a court settlement can be reached at any time during proceedings. An out of court settlement can be presented to the court for its approval in order for it to become an enforceable court decision. In such case, the court will not approve a settlement if it is contrary to law.

Alternative dispute resolution (ADR) proceedings are not compulsory. However, they are becoming a common way to resolve domain disputes.

An infringement case can be stayed pending resolution of other proceedings which deal with an issue that amounts to a prejudicial question of an infringement case. However, this is at a discretion of the court as it is not obliged to stay proceedings.

A party can file its appeal against a first instance decision within 30 days after being served with the first instance decision.

It is not uncommon for an appellate court to issue its decision within one to three years.

There are no specific provisions for trade mark litigations; standard provisions for appellate proceedings apply.

Both legal and factual reviews can be conducted in appellate proceedings, however, they are subject to certain statutory restrictions depending on specific circumstances of a case and of first instance proceedings.

Copyright and trade mark protection can apply at the same time provided that a protected object satisfies prerequisites for a copyright and also a trade mark protection at the same time.

In general, first name and surnames can be protected by trade marks if other prerequisites for registering such trade marks are met (eg, the name must be sufficiently distinguishable). There is a specific restriction for a proprietor of a trade mark protecting a surname; such proprietor cannot prohibit the use of a surname protected by a trade mark in business activities by a natural person with the same surname.

Furthermore, a natural person whose surname is protected by a third party’s trade mark has specific remedies. Such natural person can oppose such trade mark application or file an invalidation there against if the trade mark could infringe on protection of such natural person’s general rights as an individual.

A specific object can be registered as a design and/or a 3D trade mark. In such case, the object must be first registered as a design because one of design’s registration is its novelty. The object’s registration as a trade mark prior to filing an application for a design registration would mean that the object would be published in the Trade Marks Register, thereby barring its registration as a design due to a lack of novelty.

See 12.1 Copyright and Related Rights.

The general legal regulation of unfair competition applies to trade marks. It must be noted that claims from unfair competition can coexist with and in some cases supplement trade mark claims.

Some lower Slovak courts might seem to be rather protective of local businesses when considering damages caused to foreign entities by an infringement on rights of foreign proprietors of trade marks.

In a recent local case, the District Court Banska Bystrica found that using Google AdWords amounts to an infringement on rights from a trade mark.

There are no special rules in Slovak law requiring a trade mark registration for a company to be comfortable manufacturing products.

Čermák a spol

Elišky Peškové 735/15
150 00 Prague 5
Czech Republic

+420 / 296 167 111

+420 / 224 946 724

intelprop@apk.cz www.cermakaspol.com
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Law and Practice in Slovakia

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Čermák a spol is a boutique firm specialising in intellectual property and related fields. It is active in the prosecution of patents, where through its patent attorneys it represents clients before the Slovak Industrial Property Office, the EPO and other patent offices through partner offices, and after the grant of a patent, it is able to both defend against validity challenges to the patent, and enforce the patent against infringers through its attorneys-at-law. With over 40 employees and numerous external assistants and partner offices, it is one of the largest IP firms operating in Slovakia, where it has a dedicated partner office. It has established contacts in other jurisdictions around the world. Given the firm's long-term presence on the market, it has had the opportunity to represent most of the key players in all fields of technology, including most of the leading companies in the pharmaceutical, chemical, telecommunications or mechanical engineering sectors.