Amendments introduce important changes to trademark legislation
As part of the complex revision of the Hungarian IP laws, the amendments to Act XI of 1997 on the Protection of Trademarks and Geographical Indications came into force on April 1 2013.
The amendments implement international agreements and EU rules in the country, and introduce significant changes to the trademark legislation.
Below is a summary of the key amendments:
- Limitations on the registration of state emblems - as a general rule, the registration of state emblems as trademarks is still prohibited; however, if the competent authority consents to it, trademarks consisting partly or entirely of state emblems, as well as other official signs or hallmarks indicating control or warranty, may be registered. Further, official signs or hallmarks indicating control or warranty may be refused only with respect to goods identical or similar to those indicated by the official sign.
- Limitations on the registration of signs containing geographical indications - the amendments have introduced an additional limitation on the registration of signs containing geographical indications: namely, signs consisting of, or containing, geographical indications may not be registered if they cannot be registered as trademarks under EU law.
- Limitation of trademark protection on the basis of the use of one's name - under the amendments, not only natural, but also legal, persons and other organisations have the right to challenge trademark holders based on the lawful use of their names in connection with their business activities.
- Date of termination of trademark protection - in specific cases (ie, where the mark has not been put to genuine use, is deceptive or has lost its distinctive character), protection can be revoked with retroactive effect to the earlier date on which the ground of revocation occurred, provided that the ground for revocation existed at that earlier date, as well as on the date of filing of the request for revocation.
- Publicity and protection of personal data - the new rules provide that personal data submitted during the course of the proceedings, which have not been disclosed in the Trademark Register or published in official communications, can be disclosed only with the consent of the person concerned or, in the case of public data, under the general rules of administrative proceedings.
- Withdrawal or modification of decision - in specific proceedings where no adverse party is involved, the Hungarian Intellectual Property Office (HIPO) is entitled to withdraw or modify its decision following a request for reconsideration, even if the decision does not infringe the law, if the HIPO agrees with the content of the request. The modified decision must be notified to the petitioner, as well as to the persons to whom the original decision was notified. The remedies against the modified decision are the same as those against the original decision.
- Shorter deadline for payment of 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 date of the request for expedited proceedings. As a general rule, the deadline is two months from the filing date of the application.
- New limitations on the enforcement of trademark infringement claims - in trademark infringement cases, damages and other legal consequences do not apply with respect to the period during which the grounds for termination of trademark protection existed, provided that the defendant refers to this fact.
- Collective marks - a new ground for refusal has been introduced: if the collective mark is likely to mislead consumers (especially if it may give the impression that it is something other than a collective mark), registration will be refused. The amendments also clarify that the owner of a collective mark is the association and that the mark may be used by the association itself (and not exclusively by its individual members). Any modifications to the policy regarding the use of a collective mark must be submitted to, and approved by, the HIPO. Such modifications become effective at the time of registration. A mark will not be registered if it no longer complies with the legal criteria for the registration of collective marks as a result of the modifications.
- Certification marks - the holders of certification marks may not use these marks for the purpose of certification, but they may authorise such use.
- Electronic filing - as of January 1 2014, international trademark applications and related requests can be filed electronically. Currently, only national applications can be filed electronically.
Dorottya Vittay, PETOŠEVIC, Budapest
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