Firm sues gov't over trademark

A private company has filed a lawsuit against the government for trademark infringement in a case that highlights the still-evolving nature of national trademark protection laws and processes.

Czech Point 101, which has been offering real estate and property management services in the country since 2003, claims the Interior Ministry has violated its trademark by using the name Czech POINT to denote a national network of more than 6,600 offices that provide one-stop shops for various government documents.

Owner of Czech Point 101, Nathan Brown, said his company registered the trademark in 2006 with the Czech Industrial Property Office (ÚPV), the national body responsible for reviewing and deciding on trademark applications, long before the ministry's 2007 application was accepted. Both entities now hold patents from the ÚPV, a fact some following the case say may have resulted from incomplete investigations into the later trademark application.

The Interior Ministry maintains it is using the name in full compliance with its trademark registration.

"The general public knows what to imagine from this marking, as is reflected by the number of uses of these public administration contact points, which to date has benefited nearly 5.5 million users," the ministry said in a statement, arguing further that it provides a completely different set of services than Czech Point 101, a fact it said should prevent confusion between the two companies.

"We've documented this. Multiple people stop in at our offices, and we get several phone calls per month from people asking for land registry statements and criminal records from the government," Brown said. "It's very clear. There is obvious evidence of confusion."

Radim Charvát, an expert in trademark law and a professor at Masaryk University in Brno, explained that when a claim of trademark infringement is brought before the court, the court must decide if the two trademarks are "confusingly similar" based on three criteria: visual similarities, phonetic similarities and semantic similarities - if the logo or logos in question already hold a particular meaning for the public.

"Similarity alone is not sufficient. The court has to assess all of the facts of the case," Charvát said, adding that it was "unclear" why the ÚPV did not refuse the later application. "There is a likelihood that the suit could succeed if the court finds that the relevant public could be confused when they encounter the two trademarks."

In addition to registering national trademarks with the ÚPV, companies can also register with the Office of Harmonization for the Internal Market as community trademarks and with the World Intellectual Property Organization as international trademarks with designation for the Czech Republic. In July 2010, 790,000 trademarks were registered with the ÚPV.

Despite the country having a clear structure for trademark registration and review that has been harmonized with EU directives on intellectual property protection, Brown said he is not alone in his dissatisfaction with the system.

"At this point, for sure I'm frustrated by the situation," he said, "and other businesses have approached me saying they've also had problems with names and ... didn't feel like the courts dealt with it well here."

Andrea Jarolímková, a trademark attorney with Bird & Bird, said the system of trademark protection has much improved compared with years past, but admitted there are still kinks to work out.

"It's true that with trademark cases it's difficult, but from 2008, we've had just one court to deal with, the Municipal Court in Prague," she said. "Even if another trademark is registered, nothing is lost. You can still attack it in the legal system and ask for a resolution to all problems. It can take some time, though, and I understand this is frustrating to businessmen."

Jarolímková said a central issue with regard to trademark law in the Czech Republic is the lack of  high-profile infringement cases to give guidance to attorneys and courts.

One highly publicized, ongoing trademark case involves the country's most well-known national product in a dispute between state-owned Czech brewer Budějovický Budvar and Anheuser-Busch, owned by Brazilian-Belgian company InBev. Anheuser-Busch has sought to prevent Budvar from using the names "Bud" and "Budweis," the German name for the city where the beer is brewed. Budvar recently won a battle in Bulgaria when a Sofia court struck down a challenge against the company's use of the name brought by Anheuser-Busch.

Emily Thompson can be reached at
ethompson@praguepost.com