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Reduced protection of trade marks and sounds as trade marks

The Slovak President is expected to sign an amendment to the trade mark act. It would reduce trade mark protection only to those in use.

The amendment is based on EU directive No. 2015/2436, according to which trade marks only fulfill their purpose when actually used on the market. The directive explicitly states that requiring the use of marks is also necessary to reduce the total number of trade marks registered and protected in the European Union. The new amendment introduces the possibility of opening an administrative procedure for revocation of a trade mark, if it has not been put to “genuine use” for more than 5 years. It is also possible to apply for a new trade mark and state that a competitor’s old interchangeable trade mark is not in use. The proprietor of the older trade mark then has to prove that their trade mark has been in use during the past 5 years. Failing that, the new trade mark will be registered and the old will become functionally invalid. We expect that this law will change the current “strategy” of companies which own large numbers of trade marks but only use a small fraction of them.

The amendment also expands the signs which a trade mark may consist of. They will also include colors, the shape of goods or its packaging, and sounds, provided that such signs are capable of:

a) distinguishing the goods or services of one undertaking from those of other undertakings; and

b) being represented on the register.

The new obligation to “be represented on the register” opens the possibility of registering non-traditional signs, subject to the limitations of the technical ability of the trade mark register to record certain types of non-traditional signs, such as smells and taste signs.

The amendment is to come into force on 14 January 2019. The President’s signature is expected.