Protecting your brand in the Czech Republic: Trademarks

The most recent listing of the world’s top brands provided by Forbes (2020) listed 5 tech companies at the top (Apple, Google, Microsoft, Amazon and Facebook) with Coca Cola in the 6th position as the first consumer goods company. Coke’s value was a whopping 64.4 billion USD. The listing suggests that the brand alone, without a single bottle of cola, has this value. Even more staggering is that Apple’s value is more than 241 billion. That doesn’t count one iPad in their warehouse.

While few Czech brands appear on these global listings, the market has developed significantly over the last 10 to 15 years and Czech companies put more emphasis on, not only creating good products and brands, but ensuring these brands are well-protected as trademarks and take steps to maintain good brand integrity by fighting copy-cats and piracy.

I first visited the Czech Republic in 2004; the year 10 new countries entered the European Union. One of the benefits of E.U. membership was the single European Union trademark which protected the owner in all member countries. At that time, with some notable exceptions, most Czech companies concentrated on their brands domestically. For every Skoda and Zentiva, there were thousands of trademark owners who were not considering protection outside the Czech border.

Times have changed. Today, many of the legacy brands have evolved and are doing more than ever to develop a strong brand strategy while a new generation of companies are even more proactive. Thanks to the Internet and global transportation of goods the world of brands has felt a lot smaller as threats develop from far-away places like China. In order to maintain a solid brand strategy a company must take various steps to ensure they can enforce their rights when needed.

Much of this starts when deciding on a brand name. A catchy phrase or flashy brand is not good enough anymore. You first need to understand how that brand stands out in the market. Jiri Cermak, Partner at Baker & McKenzie and head of their Intellectual Property team is seeing more comprehensive strategies to brand creation; “As economies continue to speed up and products are quickly developed and sold it is becoming very important for the new denominations (for example short-listed by marketing teams to serve as potential brands) that these are going to pass the examinations of the Trademark Office as well as avoiding any potential opposition to the application. And it is not just about avoiding identical marks, but anything that could be interpreted as “confusingly similar”. The searches available on the official sites of the trademark offices are generally not comprehensive enough to avoid all potential obstacles so a comprehensive search before filing is the best way to avoid losing time and money. Results of such searches allow our clients to choose a denomination (as their future brand) that poses the lowest risk of infringing third party’s rights and, thus, which would best serve as their trademark.”

Once a brand has been chosen and the trademark registration is filed it becomes important to ensure no one else files similar trademarks that could be confused with your own. Vladimir Rott, Partner at Rott Ruzicka & Guttmann, is seeing more of his clients apply a trademark monitoring service to their brand strategy; “A lot of brand owners did not understand that just because they have a trademark registration it does not automatically stop others from filing the same mark for the same products. The European Union trademark system does not examine new applications for prior rights and most E.U. countries have harmonized their system accordingly. Consequently, if you own a trademark you should have a monitoring system in place to ensure no one else registers a brand that could be perceived as your own.”

The monitoring of trademarks has become a highly competitive business. There are a few global companies (including one represented by this writer) who provide this service not only for the Czech Republic, but globally covering every active trademark jurisdiction in the world. The service is surprisingly affordable as these companies work on volume and use state-of-the-art technology to identify confusingly similar marks including logos. A few Czech companies also offer the service. Their coverage tends to be more local without the worldwide coverage.

The greatest threats to brands today have been enabled by a world wide web and the emergence of online marketplaces where all types of goods can be sold. Most bad-actors today will never consider filing a trademark, but will simply offer goods using the same or very similar brand names to fool clients into thinking they are buying the real thing. Many times clients will buy these products knowing they are not real, but are still attracted to the lower prices and buy anyways. What is often overlooked is that these goods are usually much lower in quality and, in cases like auto-parts, food, medicines and cosmetics they are not just cheaper but represent potential dangers, and in some cases, death or other serious health risks. They are also championed by organized crime and terrorist groups meaning buyers are supporting these activities with their purchases.

Barbora Bystřická of Dermacol oversees Online Brand Protection at her company and has employed a professional service that keeps her advised when there is abuse of Dermacol’s brands on the internet. The service helps them to eliminate fake or unauthorized use and increase their overall brand integrity. According to Barbora; “Brand protection has become an important part of our strategy. We needed a tool to take measures against infringements. We don´t want our customers to get cheated by fake products. Those piracy copies are spoiling our brand name and more than that, they are potentially dangerous as the composition is completely unknown and uncontrolled.”

Interestingly, the online platforms where goods are sold have become much more compliant as courts begin placing responsibility on them to keep their platforms free of fake goods. While they seldom do anything proactively they will quickly remove listings when a brand-owner identifies it as offering fake goods. Some platforms have taken additional steps recognizing it’s importance to their brand image to ensure those who purchase on their sites are receiving genuine goods.

It is a trademark jungle out there, but Czech companies are better equipped to navigate this than ever before.

Author: Craig Bailey has worked for 20 years with Corsearch, a global provider of trademark search and monitoring services and other brand protection technologies. Craig has spent most of his career working with clients in Central & Eastern European and has been a part of the evolution of this space in many of these countries.