What is the jurisdiction of courts in disputes concerning the payment of a contractual penalty securing an obligation arising from intellectual property rights (namely, the obligation to cease using, upon termination of a contract, designations protected as registered trademarks)? This issue was addressed by the Supreme Court in its resolution (file No. 23 Cdo 2385/2025) dated 17 December 2025.
According to the legal opinion of the Supreme Court, a dispute concerning the payment of a contractual penalty securing an obligation, upon termination of a contract, to remove and refrain from further use of, designations belonging to the other contracting party or to a third party, where such designations are protected as registered trademarks, constitutes a dispute concerning a claim arising from intellectual property rights. Jurisdiction at first instance to decide such disputes lies exclusively with the Municipal Court in Prague pursuant to Section 6(1)(a) of the Act on the Enforcement of Rights in Industrial Property.
The contractual nature of the obligation to refrain from using a trademark does not alter the conclusion that the dispute (primarily) concerns a claim arising from intellectual property rights, i.e. a dispute within the meaning of Section 6(1)(a) of the said Act. The decisive criterion is whether the claim arises from a “general” contractual obligation based on a legal fact not linked to the statutory regulation of any intellectual property right, or whether it originates in the statutory regulation governing a specific intellectual property right.