A drama with a good ending

We assisted our client, an amateur theatre ensemble in Dolní Chabry, in proceedings for the revocation of an illegally registered trademark. More than a year ago, the theatre association discovered that someone else (the applicant) had registered the trademarkDivoch – divadelní ochotníci chaberští (Divoch – Amateur Theatre of Dolní Chabry), which the association used for many years in its activities. At the same time, the applicant called on the association to stop using its designation and to make further claims against the association. The association was therefore threatened not only with an imaginary “loss of identity”, but also with considerable financial damage.

After more than a year of proceedings in a complex dispute over the use of the designation, the Industrial Property Office (IPO) agreed with our extensive arguments. Among other things, it confirmed that the association has been using the designation for a long time and is known under it. The IPO, in agreement with us, concluded that the trademark applicant must have known all this when filing the application for registration and was therefore guided by intentions contrary to good faith. The IPO also confirmed our opinion that the applicant had a trademark interchangeable with the client’s long-term designation, in order to use the potential of the client’s respected designation without the client’s consent and prevent the association from operating in the field of amateur theatre.

“We are extremely pleased that the IPO has put an end to the protracted unpleasant situation that has caused a lot of difficulties for the cultural association and its activities,” said Věra Malinová, one of the founders of the amateur theatre association and the author of the disputed designation. “Thanks to the absolutely professional help, we can now devote ourselves to more enjoyable activities and continue to give joy to our spectators.” 

The IPO will declare a trademark invalid if it is proved that the application for the contested trademark was not filed in good faith. Absence of good faith, i.e. bad faith, is characterised by dishonest intent on the part of the applicant, especially if it knew of the legitimate interest of the general public or the right of another person to an identical or similar designation, or the use of the contested mark was contrary to good morals and principles practised in business relations. In the case of our client, the IPO examined the applicant’s absence of good faith. Therefore, our submission was accompanied by extensive argumentation and evidence mapping the owner’s behaviour and motives since its inception. Every detail plays a role in trademark proceedings.

Since 2019, when registering a trademark, the IPO does not automatically examine the existence of the rights of other persons to the registered designation. It is up to everyone to actively ensure the protection of their rights, ideally when another person tries to register a similar designation. You can protect your rights even when a foreign trademark is registered, but it is much more complicated. We are pleased that we helped our client succeed even in such a difficult situation.

We will be happy to help you. If necessary, we can analyse your situation and recommend a suitable procedure.

 

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