Amendments to Hungarian Trademark Law Explained

Jul 29 2013 - 11:46

As part of the complex revision of the Hungarian intellectual property laws, the amendments to Act XI of 1997 on the Protection of Trade Marks and Geographical Indications came into force on April 1, 2013.

The amendments implement international agreements and EU rules and introduce significant trademark legislation changes.

Below is a summary of the key amendments.

Limitation to Registration of State Emblems Eased

As a general rule, the registration of state emblems as trademarks is still prohibited. However, if the competent authority approves, trademarks consisting partly or entirely of state emblems may be registered as well as other official signs or hallmarks indicating control or warranty.

Further, official signs or hallmarks indicating control or warranty may be refused only with respect to identical or similar goods as indicated with the official sign.

Limitation to Registration of Signs Containing Geographical Indications

The amendments introduced an additional limitation for the registration of signs containing geographical indications, i.e. the signs consisting of or containing geographical indications may not be registered if they cannot be registered as trademarks under the EU law.

Limitation to Trademark Protection on the Basis of Use of Name

Under the amendments, not only natural but also legal persons and other organizations have the right to challenge trademark holders regarding the lawfully used names in connection with their business activities.

Date of Termination of Trademark Protection

In specific cases where the revocation is possible with retroactive effect, i.e. actions based on non-use, deceptive marks as well as marks which lost their distinctive character, the protection can also be revoked with retroactive effect to any such earlier date on which the ground of revocation occurred, provided that the grounds for revocation existed at the earlier date as well as on the date of filing the request for revocation.

Publicity — Protection of Personal Data

The new rules provide that the personal data submitted in proceedings, which have not been indicated in the Trademark Register and have not been published in official communication, can only be disclosed with the consent of the person concerned or if it is public data under the general rules of administrative proceedings.

Withdrawal or Modification of Decision

In specific proceedings where no adverse parties are involved, the Hungarian Intellectual Property Office (HIPO) is entitled to withdraw or modify its decision adequate to the request for reconsideration even if the decision itself does not infringe the law but the HIPO agrees with the content of the request.

The modified decision is to be reported to the petitioner as well as to the persons to whom the former decision was reported. The remedies are the same as against the former decision.

Shorter Deadline for Paying Trademark Filing Fee in Expedited Proceedings

In expedited proceedings, not only the fee for expedited proceedings but also the filing fee for the trademark application must be paid within one month of the filing date of such request. As a general rule, this deadline is two months counting from the filing date of the application.

New Limitation on Enforcement of Trademark Infringement Claims

In trademark infringement cases, the damages and other legal consequences do not apply with respect to the period when the grounds for termination of trademark protection existed provided that the defendant refers to this fact.

Amendments Concerning Collective Marks

The new ground for exclusion is if the collective mark is likely to mislead the consumers, especially if it may give the impression that it is something other than a collective mark.

The amendments also clarify that the owner of a collective mark is the association and that the mark may be used by the association, not exclusively by its individual members.

The modifications of policies regarding the use of collective marks must be submitted to and approved by the HIPO. Such modifications become effective at the time of registration. The mark will not be registered if it no longer fits the legal criteria of collective marks as a result of modifications.

Amendments Concerning Certification Marks

The holders of certification marks may not use these marks for the purpose of certification, but they may authorize such use.

Electronic Filing Broadens

As of January 1, 2014, international trademark applications and other requests related to them can be filed electronically. Currently only national applications can be filed electronically.

By: Dorottya Vittay

For more information, please contact Dorottya Vittay at our Hungary office.

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