Opposition procedure introduced in Hungary

Significant amendments to the Hungarian Trademark Act 1997 have come into force following Hungary's accession to the European Union. The changes have been adopted to ensure, among other things, that Hungarian trademark law fully complies with EU law. The amendments have brought into effect fundamental changes to the Hungarian trademark registration system, the most important of which is the introduction of an opposition procedure.

Up until May 1 2004, the Hungarian Patent Office (HPO) examined both relative and absolute grounds of refusal ex officio. With the introduction of the opposition system, the HPO will no longer examine relative grounds of refusal, unless cited by the holder of a prior right in an opposition procedure. Nevertheless, the HPO will conduct a search for prior trademark rights and will send the search results to the applicant. The amendments provide that the application cannot be published until one month after the applicant receives the HPO's search results, in order to allow time for the applicant to consider whether it intends to pursue the registration procedure in view of the search results. In any case, the HPO no longer has the power to reject, on its own initiative, a trademark application on relative grounds. This means that owners of Hungarian trademarks will have to take a more active role in monitoring applications so that they can bring opposition actions against applicants seeking to register similar marks. However, they can request that the HPO notify them whenever the HPO cites their trademarks in the search results provided to a trademark applicant for a fee of Ft6,000 per month (approximately €24). This notification procedure can be requested for a maximum of one year at a time.

An opposition can be filed with the HPO within three months of the publication of a trademark application in the HPO's official gazette. The opposing party must clearly state the reasons for the opposition and enclose all supporting evidence. Opponents are advised to state all the relative grounds of refusal in their oppositions because the HPO will not take into consideration any additional reasons once the three-month period expires. The official fee for filing an opposition is Ft60,000 (approximately €240).

Three-member panels will decide opposition actions before the HPO. The HPO will base its decision on the parties' written submissions, unless (i) it considers that it is necessary to hold a hearing, or (ii) any of the parties request that a hearing be held. The trademark applicant can request the HPO to require the opponent to furnish appropriate evidence on the genuine use of its earlier trademark. The opposition will be rejected if the opponent fails

• to prove the genuine use of its trademark;
  
  
• to respond to the request for evidence; or
  
  
• to appear at the HPO's hearing.

Both the opponent and the applicant can request judicial review of the HPO's decision from the Metropolitan Court. Metropolitan Court resolutions can be appealed to the Metropolitan Court of Appeals, whose decision is final and binding.

It is important to note that the amendments do not affect the general rule that the trademark registration procedure can be deemed to be completed only when a formal decision is issued to grant or reject the trademark application.

Some of the other important amendments include the following:

• The introduction of the European Economic Area-wide exhaustion of trademark rights, as opposed to the previously effective principle of national exhaustion.
  
  
• The removal of the requirement that EU nationals must be represented by a patent attorney or an attorney-at-law in proceedings before the HPO.
  
  
• The introduction of a new ground for revocation of trademark protection where a trademark owner ceases to exist and has no legal successor.
  
  
• The details of trademark applications will no longer be kept secret prior to publication. Under the previous system, third parties did not have access to trademark applications until approximately two months after the filing date.
  
  
• The Metropolitan Court now has exclusive jurisdiction in cases involving the infringement of a Community trademark in Hungary and in cases concerning the prohibition of the use of a Community trademark under Articles 106, 107 and 142(a) of the Community Trademark Regulation.
  
  
• The introduction of so-called interface rules that clarify the relationship between the Hungarian trademark regime and both the Community trademark system and the Madrid System for the International Registration of Marks.

Péter Sipos, Martonyi és Kajtár Baker & McKenzie, Budapest