Czech Republic
Answer ... Brand protection is typically secured through registration of the relevant brand as a national trademark by the Czech Intellectual Property Office or as an EU trademark by the EU Intellectual Property Office. (International registrations through the World Intellectual Property Office are also a good strategy in order to expand the brand protection internationally). Although Czech law contains instruments to protect non-registered signs under certain conditions, it is always a good idea to rely on registered rights. Once a trademark has been successfully registered, it is protected for 10 years from the priority date. This period can be repeatedly extended by an additional 10 years, subject to payment of an administrative fee. According to the Trademark Act, the trademark owner has the exclusive right to use the trademark in connection with the goods or services for which the trademark is registered.
IP rights are typically enforced by the courts. With the exception of copyright, which is regulated separately, the relevant rights and claims available in case of IP rights infringement are set out in the IP Enforcement Act, which gives the rights holder the right to request that:
- the infringer cease the activity that infringes or endangers the rights concerned;
-
the consequences of infringement or threatened infringement be removed by:
-
- recalling or permanently removing the infringing or potentially infringing goods; and
- recalling, permanently removing or destroying tools or devices determined or used in connection with the infringing or potentially infringing activities; and
- information on the origins of the infringing or potentially infringing goods and their distribution channels be provided.
Regarding monetary claims, the rights holder can claim:
-
damages – either:
-
- actual damages and lost profits, if applicable; or
- the amount calculated as double the standard market licence fee;
- surrender of unjust enrichment; or
- in case of non-monetary harm, reasonable satisfaction, which can take the form of anything from an apology to financial compensation.
Simultaneously with the enforcement of IP rights, it is also fairly common in practice to make unfair competition claims.
Czech Republic
Answer ... IP assets such as know-how and trade secrets are protected under three main statutory laws in the Czech Republic:
- the Civil Code;
- the Criminal Code; and
- the Act on Enforcement of Industrial Property Rights and Protection of Trade Secrets.
Most importantly, the Civil Code provides that a breach of trade secrets occurs where a person unlawfully discloses or makes available to another person, or uses for himself or herself or for another person, trade secrets which can be used in competition and which the person learned of:
-
as a result of having been entrusted with the secrets or as a result of the secrets having otherwise been made available to him or her:
-
- through his or her employment relationship or other relationship with a competitor;
- where applicable, through the discharge of the office to which he was appointed by a court or another body; or
- by the person’s own act or the act of another which is in breach of a statute.
In court proceedings, the authorised person may request:
- withdrawal of products from the market;
- permanent removal or destruction of products; and
- withdrawal, permanent removal or destruction of materials, apparatus and equipment designed or used exclusively or mainly in activities that infringe or threaten infringement of the law.
However, the definition of ‘trade secrets’ in Czech law is rather broad, and ‘know-how’ is not defined at all. Thus, in the franchising context – as in all other contexts – in order to rely on trade secrets, it is important to ensure that:
- the relevant intellectual assets fulfil the statutory criteria for protection; and
- in particular, the trade secret owner takes active steps to protect them.
Contractual arrangements are thus key in defining:
- what is to be considered as a trade secret or know-how for the purposes of the agreement; and
- the rights and obligations of both parties in that regard.
In addition to trade secrets and know-how, other types of IP rights are available which might also be relevant in the franchising context, such as designs, patents and utility models. The protection of these rights is established under specific legislation, but enforcement is the same as described above with respect to trademarks.