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What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
a) Inventions
· National patents and European patents with effect for the Czech Republic (note that European patents with unitary effect, i.e. Unitary Patents are not in effect in the Czech Republic).
· Supplementary protection certificates (SPCs) – additional protection certificates for substances protected in the Czech Republic by a valid patent if they are active substances of products that are subject to registration before being placed on the market.
· Utility models.
· Trade secrets.
· Possible protection under unfair competition law.
b) Brands
· Registered trademarks (including collective and certification marks). National trademarks, EU trademarks and international registrations with designation for the Czech Republic.
· Unregistered trademarks, provided that they are well-known in the Czech Republic according to Article 6bis Paris Convention and Article 16 TRIPS.
· Corporate names
· Protected Designations of Origin (PDOs), Protected Geographical Indications (PGIs) It is possible to register these nationally, through the EU and internationally (Lisbon Agreement). Applications for national and international registrations can only be submitted in relation to goods that are not covered by directly applicable EU regulations (Regulations (EU) No. 1151/2012, No. 1308/2013 and No. 2019/787).
· Traditional Speciality Guaranteed (TSGs) in accordance with Regulation (EU) No. 1151/2012.
· Domain names
· Possible protection under unfair competition law
c) Other creations, technology and proprietary interests
· Copyright
· Rights related to copyright (e.g. the rights of performers, producers, broadcasters, publishers, etc.).
· Rights sui generis of maker of database (database rights).
· Registered national and Community designs
· Unregistered Community designs
· National and Community rights to plant varieties
· Topographies of semiconductor products
· Trade secrets
· Possible protection under unfair competition law
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What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents and SPCs: Patents can be valid up to 20 years from the date of the filing of the application, subject to annual payment of the maintenance fees. The duration of medicinal and plant protection products can be extended by SPCs for up to 5 years. A six-month additional extension is available if the SPC relates to a medicinal product for children for which data has been submitted according to the Paediatric Investigation Plan (Regulation (EC) No 1901/2006).
Utility models: Up to 10 years from the filing date. The initial term lasts 4 years and may be extended twice for 3 years each time.
Trade secrets: Unlimited. As long as they fulfil the requirements for protection according to the Civil Code.
Registered trademarks: Trademarks are registered for 10 years and can be renewed indefinitely, for 10 years at a time.
Unregistered trademarks: As long as they fulfil the requirements for protection under the Trademarks Act.
Corporate names: Corporate names can be protected indefinitely and remain in force as long as they are registered in the Commercial Register.
PDOs, PGIs, TSGs: The term of protection is not limited in time.
Domain names: Domain names can be registered for at least a year and a maximum of 10 years at a time. The registration can be extended indefinitely.
Copyright: The general rule is that economic rights shall run for the life of the author and 70 years after the author’s death. There can be some exceptions to this rule. Moral rights become extinct on the day of the author’s death. However, after the author’s death, no one can arrogate the authorship of the work; the work may only be used in a way that shall not detract from its value and, unless the work is an anonymous work, the name of the author must be indicated, provided that such shall be a normal practice. Protection may be claimed by any of the author’s kin. They shall maintain this authorisation even if the protection of the copyright-related economic rights expired.
Rights related to copyright: The protection lasts from 15 to 70 years depending on the type of the right.
Database rights: 15 years from the making of the database. If, however, the database is made available during that period, the right sui generis of the maker of the database expires 15 years from the date when the database is thus made available.
Registered designs: The initial period is 5 years. It can be further extended four times, up to a maximum period of 25 years.
Unregistered Community designs: The protection is given for a period of 3 years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.
Plant variety rights: Rights last until the end of the 25th year following the year in which the protection was granted. For protected varieties of trees, hops, vines and potatoes (in case of Community rights only varieties of trees and vines), the protection lasts until the end of the 30th year following the year in which the protection was granted. The above is subject to payments of the maintenance fees.
Topographies of semiconductor products: 10 years from the end of the calendar year in which the topography protection has begun. The protection begins: a) on the day of the first public commercial use of the topography providing the topography application was filed within 2 years of such use, or b) on the day the application is filed if the topography has not been previously used in accordance with a) above.
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Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Patents, utility models, designs, topographies of semiconductor products: The inventor/designer (or a legal successor) has the right to a patent, design, utility model or topography. However, if the invention/design/topography has been made within an employment (or similar) relationship, the right to the patent passes to the employer. In such a case, the inventor has the right to reasonable remuneration.
Trademarks, PDOs, PGIs, TSGs.: The applicant.
Corporate names: Owner of the business.
Domain names: The registrant.
Copyright and Database rights: The author.
Rights related to copyright: Performers, producers, broadcasters, publishers, etc.
Plant variety rights: The plant’s breeder (or a legal successor).
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Which of the intellectual property rights described above are registered rights?
Patents, SPCs, utility models, registered trademarks, company names, domain names, registered designs, designations of origin and geographical indications, TSGs, topographies of semiconductor products, and rights to plant varieties.
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Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The text below relates merely to procedures held by the Czech national authorities.
An applicant who is not domiciled in the Czech Republic is usually required to appoint a local representative. This is subject to some exceptions relating to EU and EEA natural and legal persons.
Patents: An inventor or a legal successor can apply. After filing, ÚPV (Czech IP Office) carries out a preliminary examination and publishes the application 18 months after filing. The request for the full examination must be submitted within 36 months from the filing date. If all the requirements are fulfilled, the Office grants the patent.
Utility models: An inventor or a legal successor can apply. So-called registration principle is applied. ÚPV merely examines the fulfilment of basic requirements.
Trademarks: Anyone may apply. ÚPV carries out a formal examination and a substantive examination of absolute grounds for refusal. If the requirements are fulfilled, the Office publishes the application. An opposition can be filed within 3 months following the publication. Besides, any person can also file observations based on absolute grounds by the end of the time limit for filing an opposition. If no observations or oppositions are filed, the trademark is registered.
Collective trademarks: An application for the registration of a collective trademark may be filed by a legal person, especially, an association of manufacturers, producers, suppliers of services, and traders who have legal capacity and personality, as well as by legal persons governed by public law.
Certification trademarks: Any natural or legal person competent to certify the products or services for which a certification trademark is applied may apply for the certification trademark provided that such person does not carry on a business involving the supply of goods or services of the kind certified.
Designs: An inventor or a legal successor can apply. ÚPV carries out a formal and substantive examination (an examination of all legal requirements to grant the protection). If the requirements are met, the design is registered.
PDOs and PGIs: An application for registration of designation of origin may be filed with the Office by the association of producers or processors. An individual natural person or a legal entity may apply provided that at the time of filing of the application, it is the only person that produces, processes and prepares the goods.
Topographies: An inventor or a legal successor can apply. ÚPV examines the fulfilment of basic administrative requirements. If the application meets the requirements, the Office registers the topography.
Plant varieties: Czech and EU citizens, and citizens of members of the International Union for the Protection of New Varieties of Plants can file the application with the Central Institute for Supervising and Testing in Agriculture (“Institute”). The Institute examines if the application fulfils the requirements for protection. An opposition against the application can be filed until the decision on the application is taken. An opposition against the name of the variety can be filed within 3 months after its publication. The Institute decides on the oppositions.
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How long does the registration procedure usually take?
A smooth registration procedure from filing to registration, assuming no oppositions or observations are submitted, usually takes:
Patents: Czech patents 3,5 years on average. EP patents approx. 2 – 5 years.
Utility models: 2-3 months.
Registered trademarks: Czech trademarks 7 months on average. EUTMs between 4 and 6 months.
Domain names: Between a few hours to a few days, depending on the registrar.
Registered designs: Czech designs 9 months on average. Community designs within a couple of days or weeks.
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Do third parties have the right to take part in or comment on the registration process?
Trademarks, PDOs, PGIs, TSGs: Third parties can file an opposition against trademark applications and applications of EU PDOs, PGIs and TSGs. Oppositions can be filed within the period of 3 months from the application publication. Furthermore, any person can file observations against trademark applications based on absolute grounds by the end of the time limit for filing an opposition.
Patents, SPCs: Any person may submit observations on the patentability of the subject matter following the publication of an invention application. However, such a person shall not become party to the application proceeding. Observations can also be submitted on a published SPC application.
Plant varieties
a) National rights: Anyone may object to the Institute against: a) a filed application until the decision on the application has been issued, b) the proposed variety denomination, within three months of its publication in the Bulletin.
b) Community rights: Any person may lodge with the Community Plant Variety Office (CPVO) a written objection to the grant of a Community plant variety right. The time limits are similar to the national time limits and are stipulated in Article 59(4) of Council Regulation (EC) No 2100/94 on Community plant variety rights.
Please see Section 29 below regarding the possibilities of challenging the registered intellectual property rights after registration.
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What (if any) steps can the applicant take if registration is refused?
Patents, SPCs, utility models, trademarks, designs, topographies, PDOs and PGIs, national plant varieties: It is possible to lodge an appeal with ÚPV against its rejecting decision. The deadline for filing the appeal is 1 month from the delivery of the decision (15 days in case of PDOs and PGIs).
TSGs: It is possible to file an appeal within 15 days from the delivery of the decision.
EUTMs, Community Designs: An appeal can be filed with the relevant authority within 2 months of the date of the notification of the decision.
Community plant varieties: A notice of appeal shall be filed in writing at CPVO within two months of the service of the decision where addressed to the appealing person, or, in the absence thereof, within two months of the publication of the decision.
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What are the current application and renewal fees for each of these intellectual property rights?
National rights: patents, SPCs, utility models, trademarks, designs, topographies, PDOs and PGIs
All the fees regarding the above rights are payable to ÚPV. Current fees and payment details can be easily found on ÚPV’s website at the following link:
https://upv.gov.cz/en/ip-rights/fees.
European patents
https://www.epo.org/applying/fees.html
EUTMs
https://www.euipo.europa.eu/en/trade-marks/before-applying/fees-payable-direct-to-the-euipo
Community Designs
https://www.euipo.europa.eu/en/designs/before-applying/fees-payments
Plant varieties
a) Czech rights
Fees are payable to the Institute.
Application fee: CZK 1 000 CZK
Maintenance fees:
1st – 4th year CZK 800 annually 5th – 8th year CZK 1000 annually 9th -12th year CZK 1 200 annually 13th – 16th year CZK 1 500 annually 17th – 20th year CZK 2 000 annually Each additional year CZK 4 000 annually b) Community rights
https://cpvo.europa.eu/en/applications-and-examinations/fees-and-payments
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What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
This response applies solely to procedures held by the Czech national authorities. Failure to pay renewal/maintenance fees results in a lapse of rights. However, it is usually possible to pay the fees within an additional period of 6 months. If the fees are paid within the additional period, it is typically needed to pay twice the usual fee.
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What are the requirements to assign ownership of each of the intellectual property rights described above?
National rights: Patents, utility models, designs, topographies, trademarks, plant varieties, company names
An assignment of a patent, utility model, registered design and topography shall be effected by a written contract and take effect in respect of third parties as from its entry in the relevant public register. The transfer of a trademark must be made by a written contract and becomes effective upon entry into the register. A contract on the transfer of a plant variety must be made in written form and becomes effective on the day of its entry to the relevant public register. Company names can only be transferred together with the business.
EUTMs
An assignment of the EUTM shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment, otherwise, it shall be void. At the request of one of the parties, a transfer shall be entered in the relevant register and published. As long as the transfer has not been entered in the register, the successor in title may not invoke the rights arising from the registration of the EUTM.
Community designs
The transfer of a registered Community design shall, at the request of one of the parties, be entered into the relevant register and published. Until the transfer is not entered in the register, the successor in title may not invoke the rights arising from the registration of the Community design.
Community plant varieties
The transfer of a Community plant variety right by assignment can be made only to successors who are entitled to file an application for a Community plant variety. It shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment or of any other acts terminating court proceedings. Otherwise, it shall be void.
Copyright: Both moral and economic rights are non-transferable.
Rights related to copyright, database rights: Rights related to copyright, excluding the performers’ rights, both moral and economic, to their performances which are non-transferable, and sui generis database rights can be assigned with no special requirements.
Domain names, trade secrets
No specific requirements.
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Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
See Section 11 above.
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What are the requirements to licence a third party to use each of the intellectual property rights described above?
The text below relates merely to Czech national rights.
Patents, utility models, designs, topographies, trademarks, copyright, rights related to copyright, database rights, trade secrets, domain names, plant varieties, PGIs, PDOs, TSGs
A license regarding a patent, utility model, design, trademark and topography must be written. There is no such requirement regarding the rest of the above-stated intellectual property rights. The collective trademark cannot be licensed.
Generally, the amount of the remuneration must be stipulated in the license agreement. However, if the amount of the remuneration for the license or the manner of its determination has not been stipulated, the agreement is nevertheless valid if the negotiations of the parties to conclude the agreement show their will to conclude an onerous agreement even without determining the amount of the remuneration or the parties have stipulated in the agreement that the licence is provided gratuitously.
Licenses related to plant varieties must be provided in writing and must include an agreement on the remuneration amount. PGIs, PDOs and TSGs cannot be licensed.
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Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
The text below relates merely to Czech national rights.
Patents, utility models, designs, topographies, trademarks: Licenses of all the above rights must be registered in a relevant public register. The license contract shall have effect in respect of third parties only after its entry into the relevant register.
Copyright, rights related to copyright, database rights, plant varieties, trade secrets, domain names: No such requirement.
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Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
The text below relates merely to Czech national rights.
Patents, utility models, designs, topographies, trademarks, trade secrets, plant varieties, PGIs, PDOs, TSGs: No, both exclusive and non-exclusive licensees can enforce the licensed rights. However, licensees may enforce the rights only upon the consent of the right holder. Nevertheless, consent is not required where the right holder failed to commence the proceedings on the infringement or endangering of the right themselves within a time limit of 1 month from the receipt of the licensee’s notification of the infringement or endangering of the right.
Copyright, rights related to copyright, database rights: Only exclusive licensees can enforce the licensed rights. The licensees’ rights to enforce are narrower compared to that of the author. Licensees are, naturally, not authorized to claim recognition of their authorship and can claim adequate satisfaction for the non-financial damage only in relation to the infringement of economic rights (and not moral rights).
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Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Yes. The Czech Criminal Code (Act No. 40/2009 Coll., as amended) recognizes criminal sanctions for
(a) trademark infringement,
(b) other industrial property rights infringement,
(c) copyright infringement, infringement of rights related to copyright and database rights,
(d) illicit copies of artworks.Depending on the severity of the infringement and the damage caused, the sanction for such infringements may include forfeiture of the counterfeit item, financial penalties and ultimately also incarceration which may reach up to 8 years in the most severe cases.
Rightsholders may invoke criminal sanctions along with the civil law remedies (see Section E/17 below) by informing the relevant public authorities (police) of the infringement; however, following from the inherent characteristics of the criminal procedure in the Czech Republic, the decision as to whether to prosecute the infringement in the criminal proceedings is ultimately for the public authorities (i.e. police and prosecutor) to decide. If they choose to prosecute the infringement, it is then up to them to collect necessary evidence and carry out the investigation before referring the matter to the court.
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What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Patents, utility models, designs, topographies, trademarks, copyright, rights related to copyright, database rights: for all intellectual property rights, it is possible to enforce them in the civil court proceedings.
Domain names: apart from the civil court proceedings, rightsholders may also choose to enforce their rights against the domain name holders in a special ADR (UDRP-like) proceedings before the Czech Arbitration Court (see Section 29).
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What is the length and cost of such procedures?
Civil court proceedings: Depending on circumstances of each individual case, the length of the civil court proceedings may range between 1-2 years in the first instance. If the decision is challenged, then the appeal may take additional 1-2 years. The costs of the civil litigation depend on circumstances and complexity of each case and vary case to case.
ADR (UDRP-like) proceedings in relation to domain names: This procedure usually takes between 2-4 months. The official fee for .cz disputes is CZK 34 000 CZK in most cases (approx. 1400 EUR). The attorney fees vary depending on circumstances and complexity of each case.
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Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Patents, utility models, designs, topographies, trademarks: In the matters relating to the infringement of industrial property rights, the Municipal Court in Prague has exclusive jurisdiction.
Copyright, rights related to copyright, database rights: In matters relating to the infringement of intellectual property rights other than those listed in paragraph above, general Regional Courts shall have jurisdiction, whereas the location of the particular court is to be determined based on the domicile of the defendant.
Civil proceedings are initiated once the court delivers the court action to the defendant after the court action has been lodged with the court by the plaintiff. Following that, the court usually invites the defendant to submit observations in response to the court action. Each party shall set forth and submit evidence to support their arguments at the first hearing in the matter at the latest.
After delivery of the court action and subsequent observations, the court usually schedules oral hearing which takes place roughly 3-6 months after the proceedings have been initiated. Any suggested evidence are being carried out during the oral hearing. Parties to the proceedings may further present their statements and arguments. Following that, the court either adjourns the hearing, if it is necessary in order to secure further evidence or due to other procedural reasons, or deliberates and adopts a decision.
In the decision, the court shall decide on the merits of the case, that is, either decides that there is an infringement and that the defendant is to cease and desist any action that leads to it, as well as to pay damages to the plaintiff (see Section H), or that there is no infringement. In either case, the court grants a reimbursement of the costs to the winning party in most cases, unless due to particular circumstances other approach is necessary.
Appeal against the first instance decision is generally available. In matters related to the patents, utility models, designs, topographies, trademarks, the High Court in Prague shall have jurisdiction to decide on the appeal. In other cases, the jurisdiction shall have either High Court in Prague or High Court in Olomouc, depending on the location of the Regional Court which has had jurisdiction to decide in the first instance.
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What customs procedures are available to stop the import and/or export of infringing goods?
Rightsholders may file an application to the customs authority to take action on internal market to determine whether an intellectual property right has been infringed based on the rightsholders existing rights according to the Regulation of the European Parliament and of the Council (EU) No. 608/2013 Coll, from 12 June 2013, concerning customs enforcement of intellectual property rights, and according to the relevant Czech legislation (Act No. 355/2014 Coll., on jurisdiction of customs authorities in intellectual property matters).
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Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There are no mandatory non-court enforcement options or dispute resolution mechanisms unless it is stipulated in an agreement.
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What options are available to settle intellectual property disputes in your jurisdiction?
Apart from civil court proceedings and ADR (UDRP-like) proceedings in relation to domain names (see Section 17 and Section 29), it is possible to undergo a voluntary mediation service according to the Mediation Act (Act No. 202/2012 Coll., as amended). In certain cases, mediation may be mandated by the court.
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What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Particular conditions depend on the type of the intellectual property right. The standard of proof is governed by the applicable laws; though it is generally required that the plaintiff sufficiently (on balance of probabilities) proves, by providing appropriate evidence, that the infringement occurred.
As infringement of intellectual property rights generally falls into the category of “non-contractual liability”, general rules set forth in the Civil Code (Act No. 89/2012 Coll., as amended) apply. Under those rules, apart from the industry-specific requirements set forth in relation to each type of the intellectual property rights, it must be established that (i) there is violation of the laws or a contract, (ii) which then resulted in damage incurred by the plaintiff, and that (iii) there is a causal link between such a violation and damage.
Patents and utility models: In order to show infringement of the patents and utility models, rightsholders have to prove direct or indirect use of their patents or utility models. Given the technical nature of patents and utility models, substantial assessment of whether those have in fact been used and, subsequently, infringed upon, will be referred to the expert appointed by the court in each particular case.
Designs and topographies: In relation to the (industrial) designs and topographies, rightsholders must show that the particular design or topography has been used without authorization to do so, particularly in the course of manufacturing goods, their offering, introduction into market, import, export or use of the product in which the design is incorporated, or to which it is being applied, or storage of such products for all the preceding purposes.
Trademarks: When it comes to trademarks, rightsholders have to show that the infringing sign is either identical to the one protected by the trademark, as well as being used for the same goods and/or services covered by the trademark (double identity), or that the sign at hand, due to its identity or similarity to the sign protected by the trademark, and due to the identity or similarity of particular goods and/or services, is liable of creating likelihood of confusion on part of the public, including a likelihood of association between the sign and the trademark (likelihood of confusion). The final assessment of the infringement is usually carried out by the court without having relied on any expert opinions.
Copyright, rights related to copyright, database rights: As to the use of the copyright-protected works, the situation in assessing whether infringement occurred is much more straight-forward in cases related to the artistic works of art, rather than, e.g. software. In any case, however, the courts often rely on expert opinions in determining whether, the basis for the infringement claim is in fact copyright-protected and furthermore, whether the particular incarnation of challenged item, no matter whether work of art (literary, graphical or other) or software, is actually infringing upon the copyright-protected work.
It follows that essentially anything could serve as evidence, e.g. testimonies, expert opinions and statements, market researches and reports. There is no formal hierarchy but, as already pointed out, the courts usually tend to favour the experts when it comes technical matters.
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How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
A)
No, judges are essentially lawyers. Technical background is not required and plays no role in their appointment. In matters where technical knowledge or expertise is required, courts usually appoint experts to clarify technical aspects of the case or in order to provide necessary insight.Expert opinions may be submitted to courts also based on the initiative of one or both parties (each may submit an expert opinion as evidence and subsequently suggest expert testimony).
B)
Though disclosure and discovery, as generally known and recognized in common law legal systems, are not as such available in the Czech Republic; however, the provisions of the Czech procedural rules clearly articulate a general obligation to comply with the court’s request to communicate all circumstances relevant to the case. The judge in the civil court proceedings may also request necessary written evidence from a person who is in possession of such materials.The Code of Civil Procedure (Act No. 99/1963 Coll., as amended) further includes specific provisions on obtaining evidence relating to intellectual property. It follows that in the matters that concern disputes in the field of intellectual property, goods, samples of the products, material, tools or other documents may be secured for the purposes of the infringement proceedings even before the civil court proceedings have been initiated. The court shall exercise this rule at the request of a person who reasonably showed that their rights have been infringed upon (there is a lower standard of proof than in the main proceedings that follows).
It is generally differentiated between two situations – i) securing the evidence in order to carry them out before the proceedings is initiated, and ii) securing the physical object that is to be used in order to evidence certain conclusions in the later stages of the proceedings. This means that in the former, the conclusions drawn on basis of the particular evidence are not to be repeated in the following hearing, whereas in the later the aim is to merely secure the physical object so that it can be used as evidence further when the proceedings is initiated and the hearings take place.
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How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
It is usually the case that both parties to the proceedings submit their arguments to the court together with the indicated evidence to support their particular claims. The other party is usually free to submit written observations in order to rebut the claims made by the adversary. Further on, during the oral hearing, once the evidence are carried out (testimonies heard, statements read etc.), the parties may further exercise their right to challenge the arguments and present their positions.
In case the expert opinion is carried out in the form of the testimony at the oral hearing, both parties – i.e. including the adversary – are allowed to ask the expert questions. Although this may not generally have the same features as the “cross-examination” in common law jurisdictions, it serves very similar purpose.
Further on, the procedural rules allow anyone who is party to the proceedings to present evidence to support their arguments.
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What defences to infringement are available?
There are several defences available to the defendants when it comes to infringement. The same, or similar, defence is usually applicable to multiple intellectual property rights:
“Prior user”: Rightsholders have to tolerate the use of an identical or similar sign, invention, other technical solution, or design, in the course of trade, provided that those were demonstrably created prior to the date of filing the application for registration of a trademark, patent, utility model or design by the rightsholder claiming the infringement.
Applicable to: Trademarks, patents, utility models and designs
Exhaustion of rights: Rightsholders shall not be entitled to prohibit use of the invention, design, trademark, copyright-protected work, or enforce other rights related to copyright and databases, if those have been put on the internal market by the rightsholders or with the consent thereof. The extent of the territory relevant for the purposes of exhaustion of rights depends on the type of the intellectual property right; for example, in relation to the trademark, entire EU is relevant, whereas when it comes to patents, only the territory of the Czech Republic is relevant.
Applicable to: Patents, designs, trademarks, copyright, rights related to copyright, database rights
Use compliant with the business usage and the principles of hones business conduct (akin to “fair use” in common law systems): If the use of a trademark (i) complies with the business usage and (ii) the principles of honest business conduct, and (iii) is used for the purposes of identifying or referring to goods or services of the proprietor of that trademark, in particular, (iv) where the use of that trademark is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts, the rightsholder shall not be entitled to prohibit third parties from using the trademark in the course of trade.
Similar option is recognized in relation to copyright-protected works, or by rights related to copyright and to databases. In such a case, the use for personal benefit of a natural person for noncommercial purposes is not infringement; though only if such use (i) does not conflict with the normal exploitation of the work, and (ii) does not unreasonably prejudice the legitimate interests of rightsholders.
Applicable to: Trademarks, copyright, rights related to copyright and database rights
“Statutory licences”: In relation to patents and designs, there is number of situations in which the Czech law specifically states that the patent or design shall not be infringed; in particular, if the protected invention or design are being used (i) on board vessels of the member states party to Paris Convention, (ii) in construction or operation of aircraft or land vehicles of the same, (iii) in the individual preparation of a medicament in a pharmacy based on a medical prescription.
As to the copyright and other related rights, there are several statutory licenses in the Copyright Act (Act No. 121/2000 Coll., as amended) which stand for a basis for a lawful use of the copyright-protected works; for example (i) quotations, (ii) use of a work located in public place, (iii) use for official reporting, (iv) use by a library, archive, museum, gallery school, university and other non-profit school-related and educational establishment, (v) use for temporary reproductions, (vi) use for a photographic portrait, etc. (list is not exhaustive).
Applicable to: Patents, designs, and copyright, rights related to copyright and database rights
Use for noncommercial, educational, research and development, or experimental purposes: Use of inventions, designs and topographies for noncommercial purposes does not generally constitute patent, design or topography infringement. Under certain circumstances, also the use for educational, research and development, or experimental purposes is allowed; though the statutory conditions would have to be met with respect to each such case.
Applicable to: Patents, designs, topographies
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Who can challenge each of the intellectual property rights described above?
Generally, anyone can challenge IP rights. However, in certain cases only specific persons may challenge, see examples below:
a) patent, utility model, topography or design revocation/invalidity application based on the non-entitlement of the registered owner can be filed only by a rightful owner determined by a court decision;
b) cancellation application of a trademark or a design based on earlier rights can be filed only by the holder of the earlier right.
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When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
In relation to objections/oppositions/observations during the registration process and relevant terms and deadlines, please see Section 7 above.
Cancellation/revocation applications in relation to all registered rights can usually be filed during the subsistence of these rights. The request for revocation of some rights, for instance, a patent, utility model or registered design may be filed even after these rights lapse if the person filing the request can prove a legal interest. A trademark can also be declared invalid after it has lapsed or has been revoked. The unregistered rights can usually be challenged during the subsistence of the rights.
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Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Forum
Challenges related to registered rights are primarily brought before the registration authority. For national industrial property rights, the competent authority is ÚPV, for EU industrial property rights, it is EUIPO, except for plant varieties (national competence – Institute, EU – CPVO). Some of the registered rights can also be cancelled by the court (EUTMs and Community designs in the form of a counterclaim in civil proceedings). The competent first instance court in relation to industrial property rights, including plant varieties and trade secrets, is the Municipal Court in Prague.
Czech domain names can be challenged in ADR proceedings before the Czech Arbitration Court and in proceedings before civil courts. The competent first instance courts in relation to copyright, rights related to copyright, database rights, domain names and corporate names are regional courts.
Unregistered rights can be challenged in civil proceedings usually in the context of a defence in infringement proceedings.
Relevant grounds for challenging the registered rights
Patents, utility models: ÚPV shall revoke a patent, if: (a) the invention did not meet the conditions of patentability (novelty, inventive step, industrial application); (b) the invention is not disclosed in the patent so clearly and completely, to be carried out by a person skilled in the art; (c) the subject-matter of the patent extends beyond the content of the invention application as filed or the subject-matter of the patent granted on the divisional application extends beyond the content of the invention application as filed, or the extent of the protection arising from the patent was extended; (d) the owner does not have a right to the patent. Similar rules apply to utility models.
Trademarks: Briefly, a trademark can be revoked if a) it has not been genuinely and continuously used within a period of 5 years prior to the application for revocation; b) it has become a common name in the trade in consequence of acts or inactivity of its proprietor; c) it is used in a way that is liable to mislead the public, particularly as to the nature, quality or geographical origin of protected goods/services. ÚPV shall also revoke a trademark upon an application if there is a court decision declaring the use of the trademark to be unfair competition. Such an application has to be lodged within 6 months after the court decision becomes final.
A trademark can be invalidated based on absolute or relative grounds (earlier rights of third parties). Absolute grounds are for example non-eligibility for trademark protection, lack of distinctive character, descriptiveness, deceptive nature, etc.
Requirements for revocation and invalidation of an EUTM are similar to those concerning national trademarks and are stipulated in Articles 58, 59, 60 of Regulation (EU) 2017/1001 on the European Union trademark.
There are additional grounds for revocation or invalidation of certification and collective trademarks. For example, certification and collective trademarks can be revoked if their proprietor does not take reasonable steps to prevent the trademark from being used in a manner incompatible with the conditions of use laid down in the documents governing its use.
Registered Designs: ÚPV shall cancel a national registered industrial design if a) the requirements for registration were not met (novelty, individual character, moral and not in contradiction with public policy, etc.), b) its holder is not entitled to the industrial design, c) the industrial design has already been protected in the Czech Republic by an earlier registered industrial design which has been published only after the priority date of the challenged registered design; d) it contains a distinctive sign to which a third party has rights, e) the design constitutes unauthorised use of a copyrighted work, f) the design constitutes improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property or of other symbolic signs, flags, escutcheons other than those covered by Article 6ter of the Paris Convention, which are of particular public interest in the Member State concerned.
Requirements for the invalidation of a Community design are similar to those concerning national designs and are stipulated in Article 25 of Council Regulation (EC) No 6/2002 on Community designs.
PGIs, PDOs, TSGs: Czech PGIs and PDOs may be cancelled if they were registered despite not fulfilling the conditions stipulated by law or if these conditions ceased to exist. EU PGIs, PDOs and TSGs may be cancelled in the following cases: (a) where compliance with the conditions of the specification is not ensured, or (b) where no product is placed on the market under these rights for at least seven years.
Topographies: ÚPV shall cancel a topography if a) it no longer fulfils the statutory requirements, b) its application has not been filed within the statutory time limit, c) the applicant or owner is not entitled to the protection or d) the required supporting documents do not correspond to the semiconductor product accompanying the application.
Plant varieties: The Institute shall terminate Czech national rights to a plant variety if the protected variety no longer meets the condition of uniformity and stability or if the holder fails to ensure the maintenance of the protected variety to make sure that the characteristics specifying the variety remain unchanged or if the holder fails to, upon request by the Institute, deliver free of charge and within reasonable time limit specified by the Institute, material of the protected variety required for the performance of control tests and provide the Institute with all information necessary for the assessment of the continued existence of the plant variety.
Requirements for cancellation of Community plant variety rights are stipulated in Article 21 of Council Regulation (EC) No 2100/94 on Community plant variety rights.
Corporate names: A corporate name can be challenged if it interferes with earlier protected rights of third parties.
Domain names: A domain name can be cancelled or transferred if it unlawfully interferes with the rights of third parties and there is no justification for such interference.
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Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
The text below relates merely to Czech national rights.
Declaratory judgments
It is possible to seek for example a declaratory judgment stating that a trademark’s use constitutes an unfair competition and subsequently file a revocation application based on the judgment. Furthermore, it is possible to seek a declaratory judgment that determines which person has the right to a patent, utility model or registered design. Based on such a decision the person having the right can request ÚPV to register that person as the owner in the relevant register.
Compulsory licenses
In some cases, ÚPV may grant so called compulsory licenses. For example, upon a justified request, ÚPV is allowed to grant a non-exclusive right to use a patent or a utility model, if all legal requirements are met.
There is also a catalogue of free uses and compulsory licenses stipulated in the Czech Copyright Act (No. 121/200 Coll.).
Prior use rights
Rights stemming from trademark, patent, utility model or registered design registrations shall not be invoked against persons who have used identical technical/design solutions or signs before the priority date of the registrations. Prior users shall usually be entitled to apply to a court for recognition of their rights by the proprietor of the registration.
Other limitations
There are also provisions on exhaustion of rights and other statutory limitations of rights available in relation to IP rights in the Czech Republic.
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What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
In general, rightsholder may request
(i) non-pecuniary remedies:
that the defendant ceases and desists from infringing use,
right of information on the origin and distribution networks of the infringing goods or services, name or company name, domicile or registered office of the producer, manufacturer, person who stores the infringing goods, distributor, supplier or another previous holder of the infringing goods or service, as well as the information on the quantities produced, manufactured, supplied, stored, obtained and ordered, and information about the prices for the goods and services at hand; and
(ii) pecuniary remedies:
- payment of damages,
- reasonable satisfaction and
- return of unjust enrichment;
- the winning party is also granted a reimbursement of the costs (see Section 32 below).
When it comes to pecuniary remedies, the amount which is awarded by the courts differ depending on the type of intellectual property right as different rules apply:
Patents, utility models, designs, topographies, trademarks: The Czech law provides that the amount to be paid for damages, reasonable satisfaction and unjust enrichment, may be represented by a flat fee in the amount of at least two times the usual license fee. The court is not bound by the plaintiff’s request as to the amount and may moderate the final amount.
Copyright, rights related to copyright, database rights: The approach with respect to infringement of copyright-protected works is essentially the same, though it is governed by different laws. Conversely to the industrial property rights, the flat fee that should compensate damages, reasonable satisfaction and unjust enrichment is corresponds to exactly two times the usual license fee.
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What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The costs of the civil litigation depend on circumstances and complexity of each case and vary case to case.
Costs are recoverable but only the extent as provided for by applicable laws and there are further conditions that have to be met for one to qualify to reimbursement of costs (one has to be represented by a professional representative – qualified lawyer, either “advokát” or “patentový zástupce”. The exact amount of the costs that are to be reimbursed depends on the type of remedies sought after (pecuniary or non-pecuniary); however, the reimbursed costs usually do not cover all the expenses that the winning party incurred during the proceedings.
The Czech procedural rules recognize a mechanism for requesting a security for costs relating to the situation in which the physical objects are secured in order to be able to carry out the corresponding evidence later on in the proceedings as discussed in Section 24/b above. In such a case, the judge may require a party to pay a security bond in the amount 100 000 CZK at maximum. The particular amount shall be determined with regard to the circumstances of the case but should not exceed the maximum amount allowed by law.
The security bond payment is due within 8 days after delivery of the decision by which the security bond has been set forth. Should the requesting party fail to pay up the security bond within set timeline, the request for adopting preliminary measures to preserve the evidence will be dismissed by the court. The late payment cannot be remedied.
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The Unified Patent Court ("UPC") [came into] [will come into] existence in certain European states on 1 June 2023, as did the introduction of European patents with unitary effect ("unitary patents"). Have industry-specific trends developed in your country in terms of the number of patent applicants seeking unitary patent protection and/or enforcing European patents or unitary patents before the UPC?
There are currently only 22 requests for unitary effect filed by Czech entities. This number is too low to observe any industry-specific trends.
Czech Republic: Intellectual Property
This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in Czech Republic.
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What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
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What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
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Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
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Which of the intellectual property rights described above are registered rights?
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Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
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How long does the registration procedure usually take?
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Do third parties have the right to take part in or comment on the registration process?
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What (if any) steps can the applicant take if registration is refused?
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What are the current application and renewal fees for each of these intellectual property rights?
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What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
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What are the requirements to assign ownership of each of the intellectual property rights described above?
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Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
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What are the requirements to licence a third party to use each of the intellectual property rights described above?
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Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
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Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
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Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
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What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
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What is the length and cost of such procedures?
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Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
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What customs procedures are available to stop the import and/or export of infringing goods?
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Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
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What options are available to settle intellectual property disputes in your jurisdiction?
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What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
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How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
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How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
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What defences to infringement are available?
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Who can challenge each of the intellectual property rights described above?
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When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
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Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
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Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
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What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
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What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
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The Unified Patent Court ("UPC") [came into] [will come into] existence in certain European states on 1 June 2023, as did the introduction of European patents with unitary effect ("unitary patents"). Have industry-specific trends developed in your country in terms of the number of patent applicants seeking unitary patent protection and/or enforcing European patents or unitary patents before the UPC?