ZERIT Case illustrates trend in deadline extensions

A case involving US company Bristol-Myers Squibb Company illustrates that the courts are now less willing to grant extensions of deadlines to provide information.

On February 3 2004 Bristol-Myers filed an application for the registration of the trademark ZERIT. The Hungarian Patent Office (HPO) suspected that ZERIT was similar to the earlier trademark ZENIT (International Registration 756 897) and issued an office action requesting that Bristol-Myers provide further evidence to justify protection.

Bristol-Myers requested four three-month extensions of the deadline in order to submit a detailed response, arguing that it sought to obtain consent from the owner of the earlier mark. The HPO granted the request three times, but refused to grant a fourth extension. It referred to Section 61(5) of the Trademark Law XI/1997, under which a trademark application is deemed to have been withdrawn if the applicant fails to respond to the HPO's request within the prescribed time limit. Therefore, the HPO terminated the procedure (Decision M0400463/6).

Bristol-Myers appealed to the Metropolitan Court. The court dismissed the appeal (Decision 1.Pk.25.298/2006/3dd, May 25 2007). Bristol-Myers thus appealed to the Metropolitan Board of Appeal. The board also dismissed the appeal, holding that the HPO was right to reject the application under Section 61(5) of the law without examining whether the trademarks ZERIT and ZENIT were similar (Order 8.Pkf.25.942/2007/3dd, September 27 2007). The order became final.

The case deserves attention since the trademark application was deemed to have been withdrawn because of procedural - and not substantive - issues. Bristol-Myers requested several extensions so that it could submit a detailed response, but failed to provide suitable arguments during that period.

Moreover, the case illustrates a trend whereby courts are attempting to accelerate legal proceedings. Previously, the courts granted extensions of three months; however, extensions have now been reduced to one month. Moreover, a fourth 'exceptional' extension was usually granted if the applicant provided evidence that the negotiations were coming to an end.

In the present case, the Metropolitan Board of Appeal issued its final decision based on Section 41(2) of the law, which reads as follows:

"If no deadline for providing information or statements has been set by law, a period of no less than 30 days shall be granted; this period may be extended upon application before expiry of the period. The courts may grant extensions exceeding three months or more than three extensions only where it is justified."

The issue of time extension is significant in cases involving multinational firms, as the negotiations may take months to complete. Companies should be aware that the courts are less inclined to grant extensions.

Gabriella Sasvári, SBG & K Patent and Law Office, Budapest