There has been much debate on the amended Trademark Act, which entered into force in the Czech Republic on 1 January 2019. The most significant change it introduces is that the country’s Industrial Property Office will stop, ex officio, refusing new applications for trademarks that are the same as earlier marks. If brand owners fail to oppose these applications within three months, the conflicting signs will make their way on to the register – under the previous regime, refusal was automatic where the application was in respect of the same products or services. The move has been met with some resistance and practitioners around the country are encouraging clients in the consumer goods sector to increase their monitoring efforts. The market is also seeing an increase in competition as more dynamic firms led by younger practitioners emerge, which has shaken things up for the more traditional outfits; an effect which is seen in the WTR 1000 rankings for this year.
- Bird & Bird sro advokátní kancelář
- Rott, Růžička & Guttmann a spol
- Všetečka Zelený Švorčík Kalenský and Partners, Law and Patent Office
- Baker McKenzie
- HAVEL & PARTNERS
- Šindelka & Lachmannová
- Taylor Wessing
- Čermák a spol
- CMS Cameron McKenna Nabarro Olswang, advokáti, vos
- Korejzová Legal vos
- Traplova Hakr Kubat Law & Patent Offices
- Weinhold Legal
- Zivko Mijatovic & Partners
Strongly embedded into the firm’s global IP practice, Baker McKenzie’s Czech outpost has the wherewithal to execute complex cross-border instructions with finesse. It thrives on untangling knotty disputes and commercialising assets for maximum return; its sterling work has attracted the loyalty clients such as L Brands, Eli Lilly and HSBC, all of whom have the ear of IP division captain Jiří Čermák. “A leading figure on the trademark scene, Jiří consistently produces exemplary work. He is a domain name guru and one of the fathers of arbitration in that sector.” Recently, he has been representing a myriad of entities, including Calvin Klein, in disputes concerning cyber squatters before the courts as well as in alternative dispute resolution and UDRP proceedings. Anti-counterfeiting is another forte – of late Čermák has been devising watertight strategies for L’Oréal, Diesel, and Yves Saint-Laurent.
Bird & Bird sro advokátní kancelář
The Prague-based unit of international IP powerhouse Bird & Bird is the most talked-about practice in the Czech Republic. “The firm is definitely one to have on your radar. Its trademark offering is incredible – the team always does an outstanding job and represents an extraordinary portfolio of multinational clients.” Proctor & Gamble, Lacoste and Gant all rely on the unit for its wall-to-wall brand protection services. “The signature name of the practice is Vojtěch Chloupek. He is extremely personable and has a hands-on approach as well as a successful track record. Simply, Vojtěch is a brilliant lawyer, a trusted advisor and a pleasure to work with.” He recently worked alongside all-rounder Jiří Malý to secure favourable decisions in opposition proceedings on behalf of Monster Energy. Astute strategist Andrea Jarolímková – who is the key advisor to the Charity of Tereza Maxová for its brand strategy – brings additional firepower to the group with her versatile practice. “She is a strong, talented individual with a passion for her work. Andrea is the perfect combination of a fantastic lawyer and a person with great integrity and a kind heart.” The team has been in expansion mode lately and has brought on seasoned professionals Kateřina Floriánová and Denisa Švecová, who pack in almost four decades of experience between them. Floriánová makes light work of major trademark licensing projects, while Švecová puts together superb arguments before the Czech Industrial Property Office and the EUIPO.
Čermák a spol
Traditional boutique Čermák has been around since the 1990s; its 40-strong ensemble know the lay of the land and are fully equipped to handle the trickiest of trademark conundrums with consummate ease. Leading the charge is courtroom heavyweight Karel Čermák. “It’s great to have him on the other side of the table,” enthuses one peer, “he works like a true professional and never lets his emotions get to him. You can always rely on Karel to give his clients advice of the highest level.”
CMS Cameron McKenna Nabarro Olswang, advokáti, vos
Nestled in the heart of the commercial regulatory and disputes division of CMS Cameron McKenna Prague, the IP squad enjoys a stellar reputation for its shrewd business acumen, international outlook and all-encompassing trademark service. Tomáš Matějovský offers robust leadership to his troops. He packs a punch in enforcement – having litigated in proceedings at all levels, including the Supreme Court – but also knows how to turn down the heat in his capacity as an arbitration specialist. Matějovský’s knowledge of ancillary disciplines, including competition law, makes him a strong choice for mandates of all shapes and sizes.
HAVEL & PARTNERS
“For any market-leading corporation seeking advice of the highest calibre, from real experts in the trademark field and at great value for money – look no further than Havel & Partners.” The full-service titan is the largest firm in the country and has the wherewithal to serve up holistic counsel in all areas of brand protection. Most recently, the ensemble has been managing the portfolios of several large industry players, including the Bank of China and taking down counterfeit products on behalf of Crocs. Spearheading these efforts are practice co-captains Ivan Rámeš and Robert Nešpůrek. “Ivan is quick to react and has a great eye for detail; you can rely on him for economical and professional advice that takes business interests into consideration. He has a really positive attitude and is always on top of all his matters.” Nešpůrek shines bright in strategic consulting and safeguards brands in the automotive, retail and entertainment sectors. Rounding off the versatile team is Tereza Hrabáková who, in the words of one enthusiastic devotee, “is more than just outside counsel, but a true business partner. She knows the nuances of her client’s industries and adapts her advice to suit. Tereza is proactive in her approach and calculated in her advice, moreover she is excellent at keeping company stakeholders informed at all times. She is highly recommended to anyone seeking exceptional counsel”.
Korejzová Legal vos
Korejzova Legal has been deftly navigating the IP scene in the Czech Republic and Slovakia since 1992. It has built up a sturdy practice that combines the talents of its trademark attorneys and lawyers to ensure each asset enjoys maximum protection. Enforcement ace Petra de Brantes keeps a level head in even the most formidable of cases and rakes in one success after another.
Rott, Růžička & Guttmann a spol
Patent and trademark boutique Rott, Růžička & Guttmann a spol is a veteran on the Czech legal landscape; its longstanding presence, coupled with its deep wisdom on the subject matter, results in a top-notch comprehensive service that keeps clients coming back for more. “The team deserves the highest of praise for its capabilities – the partners work hard and the final product is always of high quality.” Working in tandem, Vladimir Rott and Michal Růžička devise optimum strategies for household brands. European trademark attorney Rott has been in the game for almost four decades; his strong suits are prosecution and portfolio management. Růžička leaves no stone unturned with his approach; he gets rights on the register and enforces them tenaciously.
Šindelka & Lachmannová
“Šindelka & Lachmannová is recommended without reservation for all trademark matters in the Czech Republic; it is a reliable and responsive contact with an excellent team that never fails to deliver a high-end service.” Firm founders Karel Šindelka and Eva Lachmannová are single-minded in the pursuit of excellence but always take the time to offer a personal touch; an approach that has brought big names in the fashion, media and tobacco industries running to instruct them in anti-counterfeiting matters. “A tremendous litigator,” Šindelka garners glowing reviews: “He has an excellent sense for developing legal arguments and strategy, and simultaneously, his advice is clear, practical and client-oriented.” “Karel has excellent insight into the challenges faced by in-house lawyers of global brand owners, as a result he has a fantastic understanding of how to cater to an international clientele.” Lachmannová is equally as revered by the market: “She is brilliant. Eva is super smart and reliable; her knowledge of European case law and its impacts on the local market ensure her proposals are well thought out, pragmatic and cost effective. Working with her is a positive experience.”
Karin Pomaizlová makes Taylor Wessing Prague a compelling choice for companies of all shapes and sizes looking for 360-degree brand protection. “Karin is a true leader in the field, her name is synonymous with the practice and one of the most renowned on the market. She is a brilliant lawyer and a seasoned litigator; Karin is a tough adversary but a pleasure to have on the other side. She presents her arguments clearly and is always reasonable and fair when battling it out for her client’s best interests.” She fights the good fight on behalf of hard hitters in the technology, pharmaceutical and tobacco spaces.
Traplova Hakr Kubat Law & Patent Offices
Celebrating its 30th anniversary this year, traditional boutique Traplová Hakr Kubát is packed to the brim with talent and experience. It nimbly dispenses its all-inclusive services to patrons across the Czech Republic and Slovakia; the unit never compromises on quality and consistently delivers results in anti-counterfeiting scenarios. Mainstay litigator and leader of the pack Jana Traplová is a smart choice for enforcement work, she cultivates strong relationships with border officials and is quick to nip infringements in the bud.
Všetečka Zelený Švorčík Kalenský and Partners, Law and Patent Office
“Všetečka Zelený Švorčík Kalenský and Partners elicits a lot of respect from its peers; it has a longstanding reputation in intellectual property and a highly professional and pleasant team who deliver superb services.” Practice head Michal Havlík needs no introduction; he is president of the Czech chapter of the International Association for the Protection of Intellectual Property and misses nothing when it comes to global legal developments. “His international outlook coupled with his specialist knowledge makes him a brilliant practitioner.” Working alongside him is polyglot Martin Švorčík, who utilises his remarkable knowledge of IP and business law to defend the interests of his multinational clients. Domain name disputes are another specialty of his.
“The work produced by Weinhold Legal is extraordinary and always exceeds expectations. It is the perfect point of contact for any trademark instruction and you can count on the team to go the extra mile.” Joining forces with professional services provider EY has allowed the firm’s cosmopolitan clientele to tap into a deep reservoir of talent and international resources in the economic and financial fields too. Martin Lukáš is the man in charge. His legal prowess transcends the contentious/non-contentious divide, while his knack for securing IP-rich deals is dazzling.
An ideal partner for companies with interests in Central and Eastern Europe, ZMP has a 15-office network that deploys A-to-Z trademark services “swiftly and cost-effectively” through a single point of contact. It is extremely active in its fight against fakes and capitalises on its pan-continental coverage to deliver crisp results. A key contact in the region is Alejandra Rosero: “She is clear in her advice and provides frequent updates. It is a pleasure to work with someone who is always on top of things.”
Other recommended expertsNew to the WTR 1000 this year, Ingrid Beránková Ambruzová “is a force to be reckoned with in licensing scenarios. She is super dynamic and clients love her.” The trademark and design attorney plies her trade out of HARBER IP. Both ŠKODA AUTO DigiLab and Nikon Corporation have the ear of Allen & Overy’s Jakub Čech, who dishes out pragmatic advice that withstands the test of time and is a staunch defender in the courts. Moving his practice from Čermák a spol to set up his own eponymous boutique, Lukáš Lorenc is a crack litigator and highly effective problem solver. Domain name whizz Michal Matějka is one to have on your side when disputes arise on the Internet – he can be found at PRK Partners Attorneys at Law.
- Jiří Čermák - Baker McKenzie
- Vojtěch Chloupek - Bird & Bird sro advokátní kancelář
- Michal Havlík - Všetečka Zelený Švorčík Kalenský and Partners, Law and Patent Office
- Vladimir Rott - Rott, Růžička & Guttmann a spol
- Michal Růžička - Rott, Růžička & Guttmann a spol
- Karel Šindelka - Šindelka & Lachmannová
- Karel Čermák Jr - Čermák a spol
- 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, advokáti, vos
- Karin Pomaizlová - Taylor Wessing
- Ivan Rámeš - HAVEL & PARTNERS
- Ingrid Berankova Ambruzova - HARBER IP sro
- Jakub Čech - Allen & Overy Praha
- Petra de Brantes - Korejzová Legal vos
- Kateřina Floriánová - Bird & Bird sro advokátní kancelář
- Andrea Jarolímková - Bird & Bird sro advokátní kancelář
- Martin Lukáš - Weinhold Legal
- Jiří Malý - Bird & Bird sro advokátní kancelář
- Robert Nešpůrek - HAVEL & PARTNERS
- Denisa Svecova - Bird & Bird sro advokátní kancelář
- Martin Švorčík - Všetečka Zelený Švorčík Kalenský and Partners, Law and Patent Office
- Jana Traplová - Traplova Hakr Kubat Law & Patent Offices