New elements in the Trademark Act
1. Changes in the chapter ‘The object of trademark protection’
The designations eligible for trademark protection are now listed in the law for
reference only, because of the addition of the words ‘in particular’. That has
enabled that a fragrance trademark submitted pursuant to the CTM regulation be
adapted as a Hungarian national trademark.
The system of the grounds for exclusion has been slightly modified, due to an
essential change in the method of the assessment of the applications for
trademark protection. In the future, the Hungarian Patent Office, instead of the
formerly routinely performed full research concerning both the relative and
absolute grounds for exclusion, will only draw up a research report concerning
the former and conduct a substantive investigation concerning the latter.
Due to the above change,
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reference to geographical product designations is now added to the system of
absolute grounds for exclusion, as geographical product designations protect
collective rights; in the future, the Office will investigate the conflicts with
them;
the institution of opposition is introduced, the complaints to be submitted only
by trademark holders entitled under the relative obstruction right, within 3
months of the publication of the application for trademark registration;
research reports are introduced, a copy of which may be requested, on the basis
of a previous application, by holders of the trademarks listed in such report on
payment of the respective fee.
2. Research reports
The Office draws up the research report concerning the relative obstruction
rights, and then forwards it to the applicant. A copy of the research report may be
requested by the parties whose previous priority trademarks appear in the
research report. Such requests are to be submitted to the Office for the period of
6 or 12 months (HUF 6,000/month), and may be extended on expiration. This
version of the research report calls the attention of the holders of prior conflicting
trademarks to their possibility of taking action in order to protect their rights.
3. Opposition
This institution did not appear under the former national trademark law.
Opposition may be lodged if the trademark notification proclaimed is in conflict
with a person’s prior trademark or designation used without registration or by
trademark holders whose trademark was notified by a representative or agent
under his own name.
The opposition fee is HUF 60,000. Opposition may be lodged within 3 months of
the publication of the trademark registration – it being a term of preclusion, i.e.
no justification may be used in the event of default. The title specified in the
opposition may only be modified during the opposition period i.e. 3 months.
While it considers the opposition, the Office will hold a hearing at request;
failure to attend such hearing has serious consequences: in the event of default by
the poopsing party, the opposition shall be deemed revoked (prior excuses are
possible), whereas the notifying party shall forfeit that method of defence if he is
in default.
The opposing party is considered a party to the trademark notification procedure,
i.e. he shall be informed of the decision of the Office providing for or declining
registration, and he is entitled to submit an application for the amendment of
such decision.
4. Observations
While the former institution of observation survives, there will be a change in its
role: any person may submit an observation concerning the absolute grounds for
exclusion only (paragraphs (2) and (3)); a person submitting an observation shall
not be treated as a party, i.e. although he is notified of the result of the procedure,
he shall not seek relief.
5. Expeditious procedure
The implementing procedure concerning the international trademarks to be
submitted pursuant to the Madrid Agreement has also been added to the national
Trademark Act; its first element is the possibility of an expeditious procedure,
i.e. if a person wishes to make an international notification pursuant to the
national trademark protection, he may request the expeditious assessment of his
national trademark notification. The application shall be submitted within a
month of submitting the trademark notification; the fee is the same as that of the
trademark notification. The period for lodging the application is a term of
preclusion.
6. Cancellation procedure
A substantive change of the rules of procedure has occurred with respect to the
cancellation procedure. Whereas before, it was possible during the procedure to
change over to a different title for deletion from the title specified in the
application for cancellation, or the application could be amended, that
opportunity is no longer available, i.e. the application for cancellation shall,
effectively, not be amended. (There is a direct opportunity for amendment at the
start of the procedure, within the period specified by the Office, in fact until the
Office sends the cancellation claim to the trademark holder.)
An important rule – which, while it has existed before, has not been given such
emphasis – a trademark may only be cancelled or an opposition against
registration may only be lodged on the basis of a trademark used by its holder
according to the Trademark Act (the obligation of continuous use for five years).
Opposition shall be demonstrated by the applicant/the opposing party; in the
event of his failure, his cancellation claim/opposition shall be dismissed.
The fee for lodging a cancellation claim is HUF 120,000, to be borne by the
defeated party. The relevant decision of the Office may be enforced pursuant to
the Act on forcible judicial collection.
7. Determination of expiration due to cessation without a successor
The addition of the above title for deletion has become inevitable because of
practical problems, as a lot of companies have ceased to exist, leaving behind
derelict trademarks without successors. In order that new market entrants could
avoid having to wait five years for default of use or the expiration of protection,
the legislator has enabled that deletion of the trademark be requested in the event
of cessation without successors. In such event, the costs shall be borne by the
applicant.
8. Community trademark
Taking into account Hungary’s accession to the Union, the implementing rules
have been adopted in the national Trademark Act, with reference to the CTM
regulation. New additions in that context include
• the regulation of the procedure concerning the forwarding of CTM
submitted in Hungary;
• the conversion of the CTM notification or trademark into a national
notification or trademark; and
• the institution of seniority.
In Hungary, the Metropolitan Court acts as the Community trademark court,
whereas appeals against its decisions may be lodged at the Metropolitan High
Court of Justice.
9. International trademarks
While the institution of international trademarks was present before in Hungarian
trademark law, it is a new element that the legislator has now regulated it in the
Trademark Act.
This has cleared up some formerly controversial issues, e.g. the date of
registration of international trademark protection shall be the day of expiration of
the period for submitting the provisional dismissal. International trademarks
extended to Hungary are treated as national trademarks, i.e. opposition may be
lodged against them, their cancellation may be requested, etc.
10. Application for amendment
The notifying party or the party lodging the opposition may submit an
application for the amendment of the decision of the Office. While the period
open for submitting applications for amendment – 30 days – has remained the
same, pursuant to the decision, with a view to the unity of law, of the Supreme
Court, the 30-day period has become a substantive period, i.e. the legal act shall
be performed on the final day of such period. (That means that the application for
amendment has to be received by the Office on the 30th day, i.e. it is not
sufficient to mail it on the last day of the period.)
11. Trademark suits – barring the use of a Community trademark
In conformity with the CTM regulation, the Trademark Act enables that the
holders of Hungarian trademarks initiate legal action in order to ensure the
exclusive use of their respective trademarks in Hungary, and therefore to obstruct
the automatic use of the CTM in Hungary, due to the accession.
12. Geographical product designations
New elements have been added under this chapter, in conformity with the
harmonization obligation, including the implementing rules concerning the
Community protection of food and agricultural products as well as the regulation
concerning the acquisition of the international protection of geographical product
designations (Lisbon Agreement), which also existed previously but were not
regulated under the scope of the Trademark Act.