“Prevent in time and at low cost the registration of a similar or even completely identical trademark” (Registration of identical trademarks by the IPO is newly possible as of 2019)
WHAT IS THE MONITORING OF TRADEMARKS?
The monitoring of trademarks refers to the repeated and continuous monitoring of trademark registers in the Czech Republic, European Union, and in selected non-EU countries. The purpose is to find trademark applications that are identical or similar to your trademark at the time before the registration of the application by the Office when they are published to give the owners of previously registered trademarks the opportunity to submit caveats.
WHY THE MONITORING OF TRADEMARKS SHOULD BE IMPLEMENTED?
Registration of similar trademarks for identical or similar objects of activity erodes your trademark portfolio due to reducing the value of your trademarks, in which you have invested a considerable marketing value, as on the market such designations exist next to one another and the customer can mix them up easily.
With identical trademarks, such mix up has fatal consequences. This type of applications was previously rejected by the Industrial Property Office ex officio. However, in 2019 an amendatory act on trademarks was enacted, under which the Industrial Property Office (IPO) will no longer reject identical trademarks, not even in the case that they are registered for a similar or even the same list of products and services.
The only possibility of the effective prevention of such trademark registration is an early submission of caveats, specifically within a time limit of 3 months as of the publication of the conflicting application. For this reason, since 2019 the monitoring has become much more significant than before, as today it is utterly up to the previously registered trademark owner whether they will protect their rights actively or will tolerate a decrease in value of their trademarks.
HOW IS THE MONITORING PERFORMED IN PRACTICE?
The monitoring of trademarks in practice consists in the regular monitoring of the electronic databases and official journals of trademarks for both trademark applications submitted in the Czech Republic, and trademark applications coming to the Czech Republic from abroad (international trademarks with designation in the Czech Republic and European trademarks). If requested by the client, trademark registers in other countries can be monitored as well. The monitoring of the trademark related situation is performed on a monthly basis with the immediate sending of discovered identical or confusingly similar trademarks and with the semi-annual billing and summary report. Once instruction to submit a caveat is received from the client, we ensure that the caveat is submitted within the statutory time limit of 3 months. The monitoring has been performed for the selected trademarks of our clients for over 20 years and during this time a number of registrations of confusingly similar trademarks have been prevented.
WHAT IS THE PRICE OF THE MONITORING?
The price of the monitoring in the Czech Republic and EU is CZK 200, exclusive of VAT per trademark and month. If the list of products and services pertaining to the trademark under monitoring includes more than 3 classes of products/services, we charge an extra fee of CZK 50, exclusive of VAT, for the 4th and each additional class.
If your trademarks include, for example, several registrations with identical word elements, it is no use monitoring all of them; the monitoring of the common word element is sufficient. We will advise you on the selection of eligible trademarks.
For the monitoring in non-EU countries, we will prepare individual pricing for you.
CONTACT DETAILS FOR ORDERS, INFORMATION AND SENDING FINAL PRICE OFFER
Petra Brůžková, DiS.
Monitoring ochranných známek
Tel.: 735 123 580
PatentCentrum Sedlák & Partners s.r.o.
370 01 České Budějovice
The following persons are in charge of these services
monitoring of trademarks