How to register a trademark

What you gain by registering a trademark and why you should address it before your competitors do

By registration, the owner acquires the exclusive right to use the trademark for the goods and services for which it is registered, and may use the ® symbol. Under Section 8 of Czech Act No. 441/2003 Coll., on Trademarks, no one may use an identical sign for identical goods or a similar sign where there is a likelihood of confusion in the course of trade without the owner's consent – including use as a company name, on packaging, in advertising, or during import.

In practice, this means that a registered trademark is practically the most effective tool to quickly stop a competitor who starts using a similar name or logo. Without it, you have to rely on general protection against unfair competition, where you must prove the likelihood of confusion and the established reputation of the sign on a case-by-case basis. How such defense differs is described in our article Trademark Protection and Unfair Competition.

The second, often underestimated reason is the value of the company. A trademark is an independent transferable asset – it is transferred by a written agreement and the transfer takes effect upon registration in the register (Section 15 of the Trademark Act). When selling a company or when an investor enters, an unregistered brand is a standard finding in due diligence and a typical argument for lowering the price. Jakub Dohnal writes in more detail about how buyers value "soft" assets in his book How to Sell a Company with Real Estate.

Step 1: Search – verify that the sign is available and registrable

Before filing an application, two questions must be answered. First: is the sign capable of registration at all? Under Section 4 of the Trademark Act, a sign shall not be registered if it lacks distinctive character, consists exclusively of signs describing the kind, quality, purpose, or geographical origin of the product, has become customary in trade, deceives the public, or is contrary to public policy. Therefore, the name "Kvalitní okna Praha" (Quality Windows Prague) for a window manufacturer generally cannot be registered – unless the applicant proves that the sign has acquired distinctive character through use in the course of trade (Section 5); a fanciful word or logo will pass.

Second question: does the sign infringe on earlier rights? Here, it is crucial to know that the IPO (ÚPV) during the substantive examination (Section 22) only examines grounds under Section 4. The office does not verify the existence of an earlier similar trademark on its own initiative – a conflict is only raised by its owner through opposition under Section 7. Therefore, an application can easily pass the examination and be rejected only several months later, when you have already ordered packaging, a website, and marketing.

The search must cover national trademarks of the IPO (ÚPV), European Union trademarks (EUIPO), and international registrations designating the Czech Republic, as all of these are "earlier trademarks" under Section 3 of the Act. In addition, unregistered signs used in the course of trade, which may be grounds for opposition under Section 7(1)(e), must also be searched. Verbal similarity can be verified in databases, but assessing the likelihood of confusion – i.e., whether the average consumer will confuse the signs or associate them – is a legal judgment where experience pays off. The Prague-based legal team at ARROWS performs searches as a standard procedure before every filing and, in disputed cases, proposes modifications to the sign or the list of goods to prevent oppositions.

Step 2: Choose the type of trademark and correctly classify goods and services

In the application, you indicate the type of trademark – word, figurative, combined, three-dimensional, and others according to Annex No. 1 of the Act (Section 19(5)). The protection of a word mark is not bound to a specific typographical design, as the subject of registration is the word sign itself, making it the strongest option for a name; a figurative or combined mark protects a specific logo. Companies with their own name and logo often need both, as a logo rebranding in five years would effectively render a combined trademark useless.

Goods and services are classified according to the international (Nice) classification and must be defined "with sufficient clarity and precision" to determine the scope of protection (Section 19a(2)). The general class heading covers only what actually falls under it (Section 19a(4)) – someone who registers only "software" is not protected for consulting services, even if they provide them. At the same time, goods are not similar just because they are in the same class, nor are they different just because they are in different classes (Section 19a(6)).

Economically, this means a decision: the CZK 5,000 fee covers three classes, each additional class costs CZK 500. A list that is too narrow does not protect future products, while a list that is too broad increases the risk of opposition, and the trademark can be partially revoked for non-use after 5 years (Section 13). Therefore, ARROWS' Prague-based lawyers compile the list according to the client's actual business plan for the next five years, not according to a template.

Step 3: Filing the application with the IPO (ÚPV) and the fee

The application is filed with the IPO (ÚPV), and each application may relate to only one trademark (Section 19(1)). It must contain details of the applicant, a list of goods and services, and a representation of the sign – for a logo, in electronic form according to the technical requirements of the office (Section 19(2) and (6)). If the application is filed by a representative, a power of attorney must be attached (Section 19(3)). If you claim priority from a foreign application, you must state the date and country of its filing (Section 19(4)).

The administrative fee for an individual trademark application is CZK 5,000 for up to three classes and CZK 500 for each additional class; CZK 10,000 for collective and certification marks. When filing the application using the electronic form of the IPO (ÚPV), the administrative fee is reduced by 20%, up to a maximum of CZK 1,000 (Section 9 of the Act on Administrative Fees). Thus, a national trademark application actually costs CZK 4,000. For comparison: a European Union trademark application with EUIPO costs €850 for one class, €50 for the second, and €150 for each additional class when filed electronically – but it applies in all 27 member states.

The filing date is key. The period of validity is calculated from this date (Section 29(1)) and it determines who is "earlier" in the event of a conflict between two applications. If the application lacks any of the requirements under Section 19(2), the IPO (ÚPV) will request completion within a period of at least 2 months – but the filing date is then considered to be the date of completion (Section 21(2)). A missing list of goods or an non-compliant logo representation can thus cost you your priority in favor of a competitor who filed correctly a week later. If you do not want to risk your priority during filing, the Prague-based ARROWS law firm will prepare and file the application for you.

Step 4: Examination, publication, and opposition period

After filing, the IPO (ÚPV) conducts a formal examination (Section 21) and a substantive examination under Section 4 (Section 22). If it intends to refuse the application, it must first allow you to submit observations on the grounds (Section 22(2)) – this is the moment when you can argue acquired distinctiveness or restrict the list of goods to save the application. If the office has already refused the application, the decision can be appealed – how to proceed with the IPO (ÚPV) and EUIPO is described in our article How to Defend Against Trademark Refusal. If the application passes, the office publishes it in the Bulletin (Section 23).

Publication triggers a 3-month period during which the persons listed in Section 7 may file an opposition; this period cannot be extended and its failure to meet cannot be excused (Section 25(1)). Oppositions must be reasoned and supported by evidence; they can only be supplemented until the end of the three-month period, and the office will not take into account any later supplements or evidence submitted later (Section 25(2)). The administrative fee for opposition is CZK 1,000. In addition, anyone may submit observations based on the grounds of Section 4 before the end of this period, without becoming a party to the proceedings (Section 24).

If an opposition is filed, the IPO (ÚPV) will notify you and set a deadline for your response; if you do not respond, it will decide based on the contents of the file (Section 26(2)). If it finds an infringement of earlier rights, it will refuse the application – or only for a part of the goods or services (Section 26(4)). Opposition proceedings are a full-fledged dispute with the burden of proof and negotiations on coexistence; how this works for an EU trademark is described in our article Opposition Proceedings at EUIPO.

The same applies in reverse: once you have a trademark, you are the one who must monitor the Bulletin and defend against later similar applications. The office does not compare earlier trademarks on its own initiative, so without regular monitoring of newly published applications in the Czech Republic and the EU, you will usually only find out about a conflicting application once it is registered – and a dispute to cancel it is then more expensive than timely filed oppositions. Therefore, we recommend setting up monitoring immediately after filing the application so that you receive an alert while the three-month opposition period is still running.

Step 5: Registration, certificate, and what follows for the next ten years

If no opposition has been filed or if it has been rejected, the IPO (ÚPV) registers the trademark in the register and issues a registration certificate; the effects of registration take effect on the day of registration (Section 28). If there is no opposition, the proceedings in practice usually take several months – the minimum is already dictated by the three-month opposition period. Under Section 8(1), the ® symbol belongs to the owner of the registered trademark – therefore, do not use it with the sign before the date of registration.

Registration is valid for 10 years from the filing date of the application and is renewed upon request for another 10 years. A request for renewal can be submitted at the earliest 12 months before the expiry of validity and at the latest on the day of its expiry; additionally within 6 months after expiry. The deadlines cannot be extended and failure to meet them cannot be excused – a late request is considered not to have been filed (Section 29(2) to (4)). The IPO (ÚPV) informs the owner of the expiry of validity at least 6 months in advance, but failure to provide this information has no effect on the expiration of the trademark (Section 29(1)). The fee for renewing an individual trademark is CZK 2,500, and CZK 5,000 during the additional period.

The second ongoing obligation is use. If the owner does not start using the trademark genuinely for the registered goods and services within 5 years from registration, or if use is suspended for an uninterrupted period of 5 years, the IPO (ÚPV) may revoke it upon request of a third party (Section 13 and Section 31(1)(a)).

If the earlier trademark has been registered for at least 5 years, the applicant in opposition proceedings may, within 2 months of receiving the opposition for response, request that the opponent prove its genuine use; if they fail to do so and this is the only earlier right relied upon, the Office will reject the opposition (Section 26a). Genuine use also includes use in a form differing in elements which do not alter the distinctive character, and use with the consent of the owner – for example, under a license within a holding company (Section 13(2) and (3)).

National, EU, or international trademark?

A national trademark with the IPO (ÚPV) only protects the territory of the Czech Republic. A European Union trademark with EUIPO protects the entire EU with a single registration, but it is also more vulnerable – an opposition based on an earlier trademark from any member state can block the entire application. An international registration through WIPO (Madrid System) builds on a national or EU application or registration and allows for the extension of protection to other selected countries; the application is filed through the IPO (ÚPV) (Section 47). The opposite situation – a foreign trademark owner who needs protection and representation in the Czech Republic – is analyzed in our article Representation of a Foreign Trademark Holder in the Czech Republic.

For a company selling only in the Czech Republic, a national trademark for CZK 4,000 is a rational start. For an e-shop expanding to Germany and Poland or a manufacturer with distributors in the EU, compare both paths in numbers: in terms of official fees alone, two or three national applications might not cost more than an EU trademark; representation costs, the number of classes, and the risk of opposition also play a role. Furthermore, online businesses face specific threats, such as a competitor using your trademark in their e-shop name or domain – we describe the defense in our article How to Defend Against Trademark Abuse in an E-shop Name.

With a growing number of countries, a single EU registration is usually administratively simpler and generally cheaper than a series of independently managed national applications. The Prague-based legal team at ARROWS law firm will propose the sequence and scope of filings based on where you actually sell, and can resolve client issues even beyond borders.

Technical solutions are protected by other instruments – a patent or a utility model; the differences are explained in the article How to Register a Utility Model?.

Final Summary

Trademark registration is administratively simple and inexpensive – an application with the IPO (ÚPV), an administrative fee of CZK 4,000 to 5,000 for protection in up to three classes, and a few months of waiting. The real risk lies outside the form: in a descriptive name that the office will refuse, in an earlier similar trademark that the office does not search for and a competitor will challenge through opposition, in an incorrectly classified list of goods, in an incomplete application that shifts priority, and in the deadlines for renewal and use, which cannot be excused.

For management and owners, a trademark is an asset reflected in the company's price during a sale, in the strength of the negotiating position against copying competitors, and in the possibility of licensing the brand within a group. If you do not want to risk refusal, loss of priority, or a dispute that arises only after you have invested in the brand, entrust the registration and management of trademarks to the Prague-based ARROWS law firm – we handle trademarks from searches and oppositions to transfers within company sales and transactional advisory. Write to us at consultation@arws.cz.