Requirements of trademark protection

Definition of Trademarks

A trademark may consist of any sign capable of being represented graphically, particularly words, including combination of words of personal names, slogans, letters, numerals, designs, pictures, two- or three-dimensional devices, shape of goods, colour, colour compounds, lights, holograms, sounds, provided that such elements or combination of elements are capable of distinguishing the goods or services marked thereby from those of others.

In the case of filing trademark applications for letters and numerals, prior use is not a requirement any more.

A mark will not be granted trademark protection if:

1. it has no distinguishing ability with regard to the goods or services it is labelled with;

2. it is technically determined by the characteristics of the goods;

3. it is liable to create confusion;

4. its use would be contrary to public policy, law or socially accepted moral rules;

5. it was filed in bad faith;

6. it consists exclusively of the name, abbreviation, flag, armorial bearing or emblem of a state, an authority or an international or intergovernmental organization, or an imitation thereof; these marks may be used, however, with the authorization of the competent authority as elements of trademarks.

These are the absolute grounds for refusal of trademark protection, which are examined ex officio or upon the observation of any third party by the Hungarian Intellectual Property Office.

A mark moreover will not be granted legal protection based on relative grounds if opposed by the owner of injured older rights if:

a) it infringes individual rights of third parties;

b) it collides with a third party's copyright or industrial property right, including protected plant variety;

c) it is effectively used by a third party without registration from an earlier date on the Hungarian market;

d) it is identical or confusingly similar to a trademark held by a third party and well known in Hungary, even if that trademark is not registered in Hungary

e) it is registered by an agent or representative without the consent of the right holder.

With respect to identical or similar goods, a mark will not be granted trademark protection if:

1. it had been under trademark protection for the benefit of a third party and, the protection having expired because of surrender or failure to renew, less than two years have elapsed since expiration;

2. it is identical or similar to a degree liable to create confusion to a third party's trademark registered on an earlier priority date;

3. it is identical with an earlier registered trademark.

Collective mark may be registered by a non-governmental organization (union, professional association) for distinguishing the goods or services of its members from the goods or services of others provided that the goods or services of the members have some common characteristics e.g. quality, origin, etc. The trademark can be only used by the members under the control of the organization.

Certification mark may be registered to distinguish goods or services of a specified quality or other characteristics by certifying this characteristic. The trademark proprietor may not produce, distribute, import the goods or services incorporated in the list of goods and may not himself use the trademark. A certification mark may be granted protection if it is accompanied by a regulation setting the conditions of use and procedure of control thereof.

 

Applicant: any legal and natural person can apply for trademark protection. Joint ownership is also possible.

 

Formal Requirements of Applications

• Name and address of the Applicant

• Specification of goods or services (International Classification)

• Power of Attorney (unlegalized, late filing possible)

• Prints of the mark (only for device marks)

• If priority is claimed, priority document must be filed within 3 months after the filing date, no extension is possible.

Trademark Registration

The priority date of a trademark application is acknowledged once the formal requirements are met. Only absolute grounds for refusal are examined by the Hungarian Intellectual Property Office ex officio. Thereafter the trademark applications are published in the Official Bulletin of the Office. Following the publication there is a 3 months time period open for third parties to submit opposition and to prove the collision between their earlier rights and the opposed trademark application. Relative grounds for refusal may be enforced only by opposition or by cancellation after registration. Anyone may raise the attention of the Office for an absolute ground by submitting an observation, explaining the grounds why the requested mark cannot be registered. Observation may be submitted any time of the registration proceeding. The person who submitted the observation will not be party in the official prosecution, but the Office will inform him on its decision.

International marks are examined like national marks, requirements for protection are identical.

The decision of the Hungarian Intellectual Property Office becomes valid at its delivery. A reconsideration request may be filed within 30 days against it to the Metropolitan Court. The decision of the Metropolitan Court can be appealed before the Metropolitan Appeal Court.

The Courts (Metropolitan Court, Metropolitan Appeal Court) can affirm, alter or reverse the decision of the Office.

 

Consent

In the case of identical or confusingly similar marks, the consent of the owner of the prior right automatically averts the obstacle of registration, without discretionary jurisdiction of the authority.