The Czech landscape has remained relatively constant since the Trademark Act was last revised in 2019. That said, there has been an uptick in opposition proceedings lately, as brand owners have been actively monitoring new applications and bringing forward claims to safeguard their rights. This is good news for the country’s practitioners, as it shows greater awareness of intellectual property among local companies – many of which are developing ambitious business plans with a view to expansion. In turn, these entities are increasingly looking to instruct international law firms with dynamic IP offerings; the more traditional boutiques are thus having to diversify their services in response to this market shift.
“A true competitor on the Czech legal landscape, Baker McKenzie’s IP department impresses with its responsiveness and cost-effective approach.” The Prague-based ensemble is fully integrated in the firm’s global network and leverages on this superbly when managing portfolios for the likes of HSBC, Toyota and L Brands, and handling infringement and anti-counterfeiting proceedings for A-listers such as Michael Kors, Eli Lilli and North Face. Taking the lead for all six is Jiří Čermák, “a pragmatic lawyer who understands the needs of global brands and adapts accordingly. He is well versed in the law, but knows what to expect in practice and achieves the best results possible at a reasonable price point”. One of Čermák’s main specialties is online dispute resolution: he sits as an arbitrator in disputes involving ‘.com’, ‘.eu’ and ‘.cz’ disputes, and has also been acting for Skoda Auto on several matters. Another notable point is Baker McKenzie’s Slovak operations – something Čermák has been building up in order to provide joined-up trademark services across the two countries.
Bird & Bird LLP
Year on year, the Czech branch of international giant Bird & Bird garners the most feedback of any firm in the country and for the WTR 1000 2021, things were no different. “Our cooperation spans many years and we consistently receive the highest levels of service and attention,” enthused one satisfied brand owner. “The team is unparalleled in its trademark expertise, assigns a combination of lawyers and agents to each client, and thinks long term, which makes us feel at ease and assured that we will not be charged unnecessarily. It always exceeds our expectations.” A driving force of the practice and a revered member of the IP community, Vojtěch Chloupek “is a true leader in the field and an excellent attorney with a confident grasp on the law across the EU states. Reliable and responsive, he knows when to take an aggressive stance in enforcement and when to focus on strengthening a portfolio”. He recently worked with Jiří Malý to assist hotel group CPI Hotels with the management of its portfolio. Patrons are quick to praise Malý for his “professionalism and customer-centricity”. The pair also linked up with versatile practitioners Denisa Švecová and Kateřina Floriánová to represent Monster Energy in five opposition and appellate proceedings. Branding strategy comes naturally to tactician Andrea Jarolímková, the key adviser to the Tereza Maxová Foundation for Children, which also relies on her ancillary know-how in disciplines such as data protection.
Čermák a spol
Founded in 1990, Čermák a spol was among the first specialised IP firms to set up shop in the country. Over the decades, it has consolidated its industry knowledge, stayed abreast with all the latest legal developments and flourished into a 40-strong boutique that advises start-ups, SMEs and global conglomerates across the trademark lifecycle. Its forte lies in litigation, which is also the metier of managing partner Karel Čermák.
There is no shortage of high-profile instructions at CMS Cameron McKenna Prague, with key industry players seeking out its comprehensive offering. The IP practitioners work in tandem with their corporate and regulatory colleagues to make the difference for clients in financially consequential disputes and transactions. Heading up the commercial, regulatory and disputes division is Tomáš Matějovský, a dyed-in-the wool litigator who successfully closes cases at all levels of the judicial system. He also maintains a vibrant M&A practice, having recently advised ČSOB – one of the country’s top two banks – on its acquisition of a 45% stake in ČMSS, the biggest building society in the Czech Republic.
HAVEL & PARTNERS
Legal titan HAVEL & PARTNERS has impressive strength in depth, as home to more than 500 employees, including tax advisers. The full-service outfit has a dedicated IP division which seeks not only to solve branding conundrums as they arise, but also to reduce risk and prevent the devaluation of assets. Most recently, Robert Nešpůrek, Ivan Rámeš and Tereza Hrabáková banded together manage the Bank of China’s Czech portfolio and acting for Apple in proceedings before the Czech Industrial Property Office. For strategic consulting and pre-litigation advice in the technology and software industries, Nešpůrek is a discerning choice; while co-captain Rámeš deftly traverses the contentious/non-contentious divide. He has also built up a superb anti-counterfeiting practice, safeguarding the rights of heavyweights such as Crocs in judicial and customs proceedings. His extensive knowledge of unfair competition law has also come in handy for the shoe manufacturer, which he is representing in a major lawsuit with a competitor that has copied its shoe and sale concept. One of the ensemble’s top prosecution minds, Hrabáková oversees the portfolios of the Czech Olympic Committee and Pivovary Staropramen, the nation’s second-largest beer producer and a member of the Molson Coors Beverage Company.
Rott, Růžička & Guttmann
Although Rott, Růžička & Guttmann may be lean in size, its extensive industry knowledge, well-rounded capabilities and seasoned practitioners ensure that it punches well above its weight. Domestic peers are quick to praise the nimble boutique: “RRG is absolutely brilliant and super-focused on trademarks, with a remarkable portfolio of clients”. Over 30 years, it has forged enduring relationships with several household names, thanks to the holistic protection it secures. Senior partners Michal Růžička and Vladimir Rott set the tone for the group. Former trademark examiner Růžička drafts watertight applications and sees them through to registration; while Rott capitalises on his keen business sense when enhancing portfolios. Joining them in the WTR 1000 this year is Petr Holý, who stands out for his exceptional handling of anti-counterfeiting matters and domain name disputes.
Šindelka & Lachmannová
“It is always a fantastic experience working with a highly skilled and approachable firm such as Šindelka & Lachmannová,” reports one associate. The one-stop shop has been making waves since opening its doors in 2015; its robust enforcement and anti-counterfeiting services are sought out by an ever-growing list of prominent clients in the fashion, technology and tobacco industries. Co-founders Karel Šindelka and Eva Lachmannová have more than 30 years in the game between them and receive effusive praise from patrons. “Karel is our go-to in the Czech Republic and has been entrusted with our most important matters. He is hands on, pragmatic and provides detailed explanations in a quick turnaround, while proactively suggesting recommendations as well. To top it off, he is a great person too.” Fellow all-rounder Lachmannova is likewise held in high esteem: “Progressive, responsive, thorough and forward thinking, Eva handles oppositions with confidence and has a great success rate. She also proves instrumental in litigation, where she advises strategically, takes business objectives into consideration and works closely with foreign counsel to implement strategies in other jurisdictions.”
Intellectual property is a central pillar at Taylor Wessing. Its astute practitioners take a personal interest in each instruction that comes their way, resulting in business-savvy advice that effectively translates from paper to the real world. The firm’s sizeable global footprint is a major plus, and the Prague office is advantageously positioned to assist in cross-border enforcement and licensing scenarios. Leading the charge, Karin Pomaizlová fully immerses herself in the trademark world and has recently co-authored the new Trademark Act commentary. “A true enthusiast, she has a phenomenal legal understanding and is a highly experienced litigator. She fiercely defends her clients’ interests, but is always fair, transparent and reasonable in negotiations. It is a pleasure working with or against her.” She frequently advises big names in the regulated industries.
Traplová - Hakr - Kubát blends traditional quality with a commercially oriented approach that resonates perfectly both with domestic brands keen to expand into Europe and with international companies seeking to establish a presence or defend their rights in the Czech Republic and Slovakia. The lawyers here take time to build fruitful partnerships with foreign counsel and holds several positions in global networking organisations to ensure that services are as seamless as possible. Backbone of the practice and crack litigator Jana Traplová is crucial ally in complex disputes and works closely with Customs to get fakes cleared from physical and online marketplaces.
Všetečka Zelený Švorčík and Partner, Law and Patent Office
Sterling results are achieved by Všetečka Zelený Švorčík and Partners across the spectrum of brand protection and its commitment to excellence is visible in every brief it signs off on. The stacked commercial law outfit can advise in English, German, French and Russian, which explains its position as counsel of choice to numerous foreign firms seeking reliable counsel in the Czech Republic. The side enjoys a glittering reputation in litigation, courtesy of the star performances and hard graft put in by Michal Havlík and Martin Švorčík. As president of the Czech chapter of the International Association for the Protection of Intellectual Property, Havlík never misses a legal development – something he leverages when putting together his arguments. Splitting his time between business, unfair competition and trademark law, Švorčík navigates multi-faceted disputes with consummate ease.
Wall-to-wall trademark services are the order of the day at Weinhold Legal. However, it shines brightest in the transactional space, where it works hand in glove with rights holders to fully understand their business rationale and ensure they receive maximum return on their investments. A partnership with professional services provider EY opens up a massive talent pool in the economic and financial sectors, as well as a vast international reach which its clientele can utilise to the fullest. The man in charge is the versatile Martin Lukáš. “Knowledgeable, professional and humble, he really is a pleasure to work with. He has an ability to see issues before they arise and proactively avoids them, which makes for an incredibly smooth process and very happy customers.”
A unique player on the national market, Zivko Mijatovic & Partners is the ideal match for companies looking to register, defend or enforce their rights across 15 countries through a single point of contact. A source of major praise is its finely honed anti-counterfeiting service: everything from customs applications to seizures and destruction orders can be left in the very capable hands of the Zivko troop. A key contact on the ground, Michaela Handrejchova is the point person for potential instructions.
Other recommended expertsAt HARBER IP, trademark and design attorney Ingrid Beránková Ambruzová has a refined understanding of technology and helps brand owners to successfully commercialise their assets. Enforcement ace Petra de Brantes of Korejzová & Spol drives the practice forward with her first-rate advocacy and strong leadership skills. “Working with Jakub Čech is fantastic: he is responsive, super-professional and always has a positive attitude. Negotiations with him are smooth and he does a great job.” The charismatic lawyer plies his trade at Allen & Overy. Making his debut in the WTR 1000 this year, Legalité’s Vít Horácek is one of the finest arbitrators in the country, with a particular affinity for domain name disputes. Lukáš Lorenc supplies first-class litigation services to IP-rich businesses of all shapes and sizes that come knocking on the door of LORENC IP. Over at PRK Partners Attorneys at Law, Michal Matějka thrives at the intersection of IT and IP, executing contentious and contractual mandates with aplomb.
- Jiří Čermák - Baker McKenzie
- Vojtěch Chloupek - Bird & Bird LLP
- Michal Havlík - Všetečka Zelený Švorčík and Partner, Law and Patent Office
- Karel Šindelka - Šindelka & Lachmannová
- Tereza Hrabáková - HAVEL & PARTNERS
- Eva Lachmannová - Šindelka & Lachmannová
- Lukáš Lorenc - LORENC IP
- Michal Matějka - PRK Partners Attorneys at Law
- Tomáš Matějovský - CMS Cameron McKenna Nabarro Olswang LLP
- Karin Pomaizlová - Taylor Wessing
- Ivan Rámeš - HAVEL & PARTNERS
- Vladimir Rott - Rott, Růžička & Guttmann
- Michal Růžička - Rott, Růžička & Guttmann
- Ingrid Berankova Ambruzova - HARBER IP sro
- Jakub Čech - Allen & Overy LLP
- Petra de Brantes - Korejzová & Spol
- Kateřina Floriánová - Bird & Bird LLP
- Petr Holy - Rott, Růžička & Guttmann
- Vít Horácek - Legalité Advokátní
- Andrea Jarolímková - Bird & Bird LLP
- Martin Lukáš - Weinhold Legal
- Jiří Malý - Bird & Bird LLP
- Robert Nešpůrek - HAVEL & PARTNERS
- Denisa Svecova - Bird & Bird LLP
- Martin Švorčík - Všetečka Zelený Švorčík and Partner, Law and Patent Office
- Jana Traplová - TRAPLOVÁ HAKR KUBÁT Law and Patent Offices