We helped another client win a case to invalidate an unlawfully registered trademark.
Store Invent, an inventory of goods and assets, sought to invalidate a trademark owned by a third party misusing its corporate logo. The client only became aware of the fact that the company logo had been registered as a trademark by a former colleague, in his own name, when it received a serious offer from the colleague to buy the trademark. However, the trademark was identical to the client’s logo. This initiated a dispute over the legitimacy of the trademark registration that lasted more than a year and a half. As the client was completely unaware of the misuse of the logo, it was unable to defend itself and, through no fault of its own, missed the deadline for filing an opposition to the trademark registration. It therefore did not prevent its registration. It had no choice but to take legal action to have the trademark declared invalid, which required extensive argumentation and evidence. Without this action, the client would have found it difficult to use its logo in its business, as doing so would infringe the existing trademark and could be subject to a fee.
After reviewing the documents, one of the arguments we made in the motion to invalidate the trademark was that the trademark application was not filed in good faith on the part of the petitioner. The bad faith intent had to be proven by the person who challenged the validity of the trademark, i.e. our client. We supported our client’s claim with evidence. The Industrial Property Office of the Czech Republic therefore concluded that the disputed trademark was indeed registered in breach of the principles of good faith and declared it invalid. It emphasized that the contested trademark was registered to exploit the potential of the trademark without our client’s consent and to prevent our client from operating in the inventory business in the future.
However, success in a trademark invalidity proceeding does not in itself mean that the trademark automatically passes to the client and that no further action is required. A trademark that has been declared invalid is viewed as if it had never been registered. To protect the client’s logo and prevent a similar situation from arising in the future, we helped the client register its logo in the Trademark Register.
Unfortunately, this case is by no means unique. As of 2019, the Industrial Property Office of the Czech Republic does not automatically examine the existence of other persons’ rights to the registered sign when registering a trademark. There are many cases where a client discovers only later that its logo is being used illegally by a competitor, either as an unregistered sign, as a trademark, or even in a trade name (company name). There is no choice but to actively defend and enforce your rights. Otherwise, your sign or another element of your corporate identity may easily be snatched away from right under your nose. The Office does not address the authorship of the logo or the legitimacy of its use in the trademark application. If the application meets all the requirements and if there are no objections to its registration, the Office will always register the trademark, even if you may own an older trademark or have been using your sign for a long time. If you do not disclose this to the Office in the relevant proceedings, the Office will not investigate this fact itself.
First, we recommend that you ensure your rights to any sign are protected as soon as possible from the start of your business, from the licence agreement if you are not the sole author of the sign, to the eventual registration of industrial property rights (in the case of a logo, especially a trademark). You can enforce your rights even if someone else’s trademark is registered, but it is much more complicated and needlessly risky.
We will be pleased to help you analyse your situation and recommend an appropriate course of action. Even in a difficult situation we can help you. If you would like more information, please get in touch with Veronika Chrobok or your contact person in our office.
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