Conditions for exercising the right of a previous user of an unregistered designation

JUDr. Jakub Vozáb, PhD. 26.10.2016

Conditions for exercising the right of a previous user of an unregistered designation *************­************************­************* *****************

** For the conclusion on the existence of the right of a previous user of an unregistered sign, which limits the effects of a trademark pursuant to § 10 para. 2 of the Trademark Act, the extent (local scope) of using the unregistered sign is not significant. The local scope is (from the point of view of trade mark law) essential when considering another, much stronger right of the previous user, namely the right which, in turn, means protection against anyone who would like to formally protect the same designation for himself. Only if the unregistered designation acquires a greater than local reach, ie if it becomes characteristic for certain products or services due to the scope and manner in which the marked products or services participate in the market, its user can in the manner specified in § 7 paragraph 1 (a) g) of the Trademark Act, ie by opposition, to prevent the same or similar sign from being registered as a trademark for another person, if the right to this sign arose before the filing date of the application. At the proposal of the same person, even an already registered trademark may be declared invalid (cf. § 32 para. 5 of the Trademark Act). **

(Judgment of the Supreme Court of the Czech Republic file no. 23 Cdo 3782/2015, dated 26.10.2016)

The Supreme Court of the Czech Republic ruled in the case of the plaintiff Němec s.r.o., with its registered office in P., represented by JUDr. V.R., lawyer, established in P., against the defendant R. L., established in P., represented by JUDr. M.R., lawyer, established in P., for the protection of the rights of the trademark owner and protection against unfair competition, conducted at the Municipal Court in Prague under file no. 2 Cm 2/2013, on the plaintiff's appeal against the judgment of the High Court in Prague of 19 March 2015, No. 3 Cmo 342 / 2014–133, so that he rejected the appeal.