According to Article 4.1(i) of the Slovak Trade Mark Act, a sign shall not be recognized as a trade mark where the Industrial Property Office of the Slovak Republic (the Trade Mark Office), on the grounds of oppositions filed pursuant to Article 9, decides that it is identical with or confusingly similar to an author's work created prior to the filing date of the application whereby using such a sign the author's copyright could be affected.

The Slovak Trade Mark Office published a trade mark application with the wording Mulan applied for in classes 25 and 42 of the international classification. The owner of a US copyright registration named Mulan filed an opposition against this trade mark application based on the above provision of the Trade Mark Act. The Trade Mark Office refused this opposition arguing that the opponent did not prove the possibility of a relation between the name of the movie Mulan and goods/services applied for in classes 25 and 42 of the international classification. The Office concluded that the opponent had not proved a way that his rights could be affected by the use of the applied denomination on the goods and services in question. The opponent did not agree with this argument and filed an administrative action against the Office's decision with the court.

The court finally cancelled the decision of the Trade Mark Office based on the administrative action arguing that the decision is unlawful. The court indicated that the registration of the contested trade mark application for goods/services applied for on behalf of the applicant could invoke a misleading idea or association that the goods/services named Mulan have any connection with the author or the movie Mulan, or that there is any business, licence or other contractual relationship between the author and the applicant. Moreover, the court agreed with the argument of the opponent that the author's work is protected in the Slovak Republic through the Berne Convention having an absolute character – that is, that the copyright affects all goods/services.

Andrea Povazanová

Cermak Horejs Matejka a spol.
Národní 32, 110 00 Praha 1
Czech Republic
Tel: +420 296 167 606
Fax: +420 296 167 605
sspatova@apk.cz
www.cermakhorejsmyslil.cz