Trademark validity

Ten years and not a day more: validity and renewal of registration

Trademark registration is valid for 10 years from the date of filing the application; if the owner does not request a renewal of the registration, the trademark expires, and the office informs the owner of the expiry date at least 6 months in advance (Section 29 of the Trademark Act under Czech legislation). Failure to provide this information does not establish state liability for damage and has no effect on the expiry of the validity period. The notification is therefore a mere service that cannot be relied upon.

The validity period is calculated from the filing date of the application, not from registration. A company that applied for a trademark in March and obtained registration eight months later has a deadline of 10 years from March. Therefore, the filing date, and not the certificate date, is entered into the register. A difference of several months is enough for a company to miss the proper renewal deadline in good faith.

Renewal is carried out at the request of the owner always for another 10 years, and the request is filed at the earliest within 12 months before the expiry of the validity period, but at the latest on the day of expiry (Section 29(2)). The filing window is therefore one year long. A company that sets a reminder in its records for the beginning of the window has a whole year to prepare and file, and does not have to deal with deadlines at the last minute.

The renewal takes effect on the day on which the validity period of the registration expires, and the office enters it in the register and publishes it in the Bulletin (Section 29(7)). The trademark thus remains valid without interruption, even if the request is filed within the grace period. However, anyone who fails to file a request even within this period will lose the trademark, and a new application will receive a new priority date, which a competitor can exploit. How a trademark is applied for and what the office examines is summarized in the text on how to register a trademark.

Grace period and partial renewal: what the law allows

A request for renewal can be filed at the latest within a grace period of 6 months after the expiry of the validity period (Section 29(3)). If the request is filed outside the deadlines under paragraph 2 or 3, it is considered not to have been filed (Section 29(4)). The deadline for filing the request cannot be extended and missing it cannot be excused (Section 29(2)), so after the grace period expires, the trademark expires and cannot be saved by renewal.

The grace period is an emergency brake, not a plan. If the renewal is carried out within the grace period, it takes effect on the day on which the validity period originally expired (Section 29(7)), so protection continues without a gap. The risk lies elsewhere: in the grace period, the company no longer has any buffer, and any further delay cannot be remedied. Good practice is therefore to file the request in the first months of the year before the expiry of validity and keep the grace period only as an insurance policy.

It is also possible to renew only a part. If the request is filed only for some of the goods or services for which the trademark is registered, the registration is renewed only for them, and the owner must state in the request for which goods or services the registration is to be renewed or, as the case may be, which are being removed from the list (Section 29(5) and (6)). This is useful where a company has ceased a certain activity and does not want to pay for protection it does not need.

However, the decision on partial renewal is irreversible: goods or services removed from the renewal cease to be protected and cannot be added back retroactively. Before removal, it is therefore necessary to assess whether the company might want to use them again in the future and whether their loss would open up space for a competitor. Generally, it is safer to renew more than less.

Use of the trademark: what is at risk after five years of non-use

An owner who does not start using the trademark genuinely within five years of registration or does not use it continuously for five years is exposed to consequences, unless there are proper reasons for non-use (Section 13 of the Trademark Act under Czech legislation). Non-use does not automatically cancel the trademark: the registration continues and can be maintained by renewal. However, an unused trademark can be revoked upon request of a third party, and the owner will find it difficult to rely on it in opposition proceedings. For international trademarks designating the Czech Republic, the law sets special rules for the start of the five-year period.

Use with the consent of the owner is deemed to be use by the owner. The law explicitly states this (Section 13(3)), and therefore it is possible to keep the trademark alive even when it is used by a subsidiary or a licensee. The law does not require a license agreement for this, but the consent must be provable, and a written license is the best evidence. The arrangement of trademarks within a group and licensing between companies is discussed in the separate text Trademark in a holding company.

It is important that the use corresponds to what is registered. The decisive factor is not the class numbers, but the specific goods and services for which the trademark is registered: even within a single class, it may be used only for a part of them. A company that has a trademark registered for a broad list of goods and services and uses it only for a few exposes the rest to the risk of revocation. When renewing, it is therefore reasonable to consider what the company actually uses and what it is just holding onto just in case.

The use must also be "genuine". Mere preparation or registration in a register is not enough, and purely formal or token use may not be considered genuine. Genuine use means use in the course of trade in a manner consistent with the function of the trademark: to distinguish goods or services. There is no fixed minimum turnover threshold; the nature of the product, the market size, and the intensity of use are always assessed. For companies that hold a trademark mainly as a defense, this condition is the most common source of problems.

How to prove use: record-keeping that stands up

Documents proving use are not to be searched for only at the moment of a dispute. Good record-keeping is ongoing: invoices and orders mentioning the trademark, catalogs and price lists, dated website screenshots, promotional materials, photographs of packaging and products, and turnover data under the trademark. Documents are sorted by year and by the goods and services for which the trademark is registered, so that use can be easily demonstrated for each group.

The best document is one that was created in the ordinary course of business and has a date. An invoice with the trademark name is more convincing than a later statutory declaration. A website screenshot from an archive is better than a description of what the website looked like. It is important that the documents cover the entire period, not just a part of it, and that they come from different sources: one document is easily challenged, ten different ones are difficult to dispute.

The problem usually is that a company changes systems over ten years and documents get lost. Therefore, it is worth establishing a simple procedure: once a year, the responsible person downloads a representative sample of documents for each registered trademark and saves them in one place. It takes an hour a year and can save a trademark that is crucial for the company.

How evidence of use looks in practice for products with packaging, where the trademark and the appearance of the packaging differ, is discussed in the text on how to protect a food supplement brand and packaging and prove use. The principles are general and apply to other fields as well, because the office assesses the same questions for every trademark: when, where, for what, and to what extent the trademark was used.

Revocation request for a third-party unused trademark

The office shall revoke a trademark in proceedings commenced upon request of a third party if it has not been put to genuine use for a continuous period of 5 years preceding the filing of the request for the goods or services for which it is registered, and there are no proper reasons for non-use (Section 31 of the Trademark Act under Czech legislation). A competitor's trademark that blocks your registration can thus fall if nobody is using it.

Under certain conditions, use commenced or resumed shortly before the filing of the request is not taken into account. This must be use commenced or resumed after a five-year period of non-use within three months preceding the filing of the request, and at the same time a case where preparations for use began only after the owner became aware that a revocation request might be filed (Section 31(1)(a)). The owner therefore cannot "save" the trademark by token short-term use just before the request.

The request must be reasoned and may concern part or all of the goods or services for which the trademark is registered (Section 31(3) and (4)). It contains an indication of the goods or services to which it relates, or an indication that it relates to all of them (Section 31(5)). A company that needs to clear specific goods or services can therefore challenge only those and leave the rest, which reduces the risk of opposition and increases the chance of success.

The office shall notify the owner of the request and set a deadline within which the owner may submit observations and, in the case of a request based on non-use, present evidence of genuine use (Section 31a of the Trademark Act under Czech legislation). If it finds that the ground for revocation exists, it shall revoke the trademark, possibly only for the affected goods or services. To the extent revoked, the trademark shall be deemed not to have had the effects provided by law from the date of filing the request; at the request of a party, the office may also determine an earlier date on which the ground for revocation occurred (Section 31a(5)).

Proof of use in opposition: the other side of the same coin

Defending one's own trademark and attacking another's meet in opposition proceedings. If the earlier trademark had been registered for at least 5 years on the filing date or priority date of the opposed application, the opponent shall, at the request of the applicant, provide proof that they put it to genuine use during the five years preceding that date, otherwise the office will reject their opposition if it is the only earlier right (Section 26a of the Trademark Act under Czech legislation). A company with good record-keeping of use thus gains an advantage.

The same rule works both ways. When you challenge a third-party application, the opposing party can ask you for proof of use of your earlier trademark. When you are defending yourself, you can ask for proof from them. Therefore, it is worth knowing the deadlines: the request is filed at the latest within two months from the delivery of the opposition, and the opponent has four months from the office's invitation to submit evidence, with neither deadline being extendable. The procedure for opposing a third-party application is discussed in the separate text Someone has applied for a trademark similar to yours.

This is related to how a brand is protected in practice. A company that knows its trademark is used and can prove it defends itself in proceedings completely differently than a company that is unsure. Information about use is among the things that are handed over with other documents during a company transition, not just kept as the internal knowledge of one person.

Brand protection in a broader sense, including unfair competition tools, is discussed in the text on trademark protection and unfair competition. Where revocation or opposition does not succeed, the owner returns to these tools, as they also protect signs that are not registered in the register or whose registration is insufficient.

Six steps from tracking deadlines to challenging a third-party trademark

The first step is to establish record-keeping: for each registered trademark, the filing date, registration date, expiry date, the start of the renewal window, and the end of the grace period. Record-keeping belongs in a calendar, not in one person's head. For companies with multiple trademarks, a spreadsheet or a tool that alerts three months before the start of the window is worthwhile.

The second step is to regularly verify use. Once a year, the company reviews its registered trademarks and verifies for which goods and services it actually uses them. Those that it does not use and does not plan to use are removed during renewal or put to use. Such an audit reveals a problem before a competitor does. The third step is to save evidence of use for each trademark.

The fourth step is timely renewal, i.e., in the first months of the window, not in the grace period. The fifth step is to monitor competing trademarks that block your path and verify whether they are used. The sixth step is the decision whether to file a revocation request: it is worthwhile where a third-party trademark blocks your registration or expansion and it can be assumed that nobody is using it.

Decision-making is simplified by one question: how much would it cost you to leave the third-party trademark alone, and how much would the request cost. For a brand that has blocked your main product, a request is often the cheapest path. For a minor trademark in an unrelated field, it makes no sense to risk a dispute that could lead to retaliation. A proper request is targeted: it challenges only the goods and services you actually need.

Four ways a company can lose its trademark

The first way is a missed renewal. The company is sure that the renewal is being handled by an accountant or lawyer, and nobody files it even within the additional six-month grace period. The trademark then expires and cannot be saved by renewal. The cost is a new application with a new priority date and the risk that a competitor's similar brand will be registered in the meantime. Prevention consists of record-keeping and one responsible person.

The second way is non-use that nobody monitors. The company has a trademark registered for a broad list of goods and services and uses it only for a few. After five years, a third party can file a revocation request for the unused parts, and the company has no documents during the dispute. The cost is the loss of protection precisely in the fields where it wanted to expand. Prevention is an annual use audit.

The third way is lost records. Proof of use does not exist or is scattered, so the company cannot even respond to a request for proof in opposition proceedings. The fourth way is relying on the office's notification: the office informs of the expiry at least six months in advance, but failure to provide the information has no effect on the expiry of the validity period. Therefore, the Czech legal team at ARROWS law firm sets up deadline and use tracking and prepares revocation requests for third-party trademarks.

Risks of trademark portfolio management

Final summary

The validity of a trademark is limited and requires two things: timely renewal and genuine use. The article showed that deadlines cannot be extended or excused and the grace period is only an insurance policy, that use with the consent of the owner is deemed to be use by the owner, and that a third-party unused trademark can be challenged by a revocation request.

For company management, this implies a clear procedure: establish deadline tracking, verify use and save documents once a year, and make decisions on renewal and challenging third-party trademarks accordingly. Postponing these steps leads to the company losing a valuable brand due to a missed deadline or missing evidence.

The Czech legal team at ARROWS law firm manages trademark portfolios, monitors renewal deadlines, prepares proof of use, and files revocation requests for unused trademarks of competitors. Write to us at consultation@arws.cz or check out our service for contracts and negotiations.