04-27-2011 (Newsletter Issue 7/11)Electronic TM Filing Improved The Hungarian Intellectual Property Office (HIPO) has improved its trademark electronic filing system. As of March 1st, 2011, nearly all trademark prosecution matters, such as requests for official registry excerpts, changes of registered information and accelerated proceedings, can be requested electronically.
The HIPO now also notifies parties about its decisions electronically and regularly updates its online register. The improved system can generate official trademark registry excerpts in a secure electronic format and send them to the rights holders.
Prior to this change, the HIPO only accepted trademark applications and renewals in the electronic form, while all other documents had to be filed in hard copy. The online register was unofficial and was not updated regularly.
In spite of these improvements, the HIPO will still continue to accept all the above-mentioned requests in hard copy.
Furthermore, the name of the Hungarian Patent Office has changed to Hungarian Intellectual Property Office (HIPO) as of January 1st, 2011, in conformity with the Office's wide range of activities, including all titles of industrial property and copyright.
Petosevic, Balkan Regional Office and
Hungarian Intellectual Property Office
Legal basis is the Trademark Act no. XI of 1997
. Hungary is a member of the Madrid Agreement and the Madrid Protocol. Since May 1st, 2004, it has been a member of the European Union.
Trademark protection is obtained by registration. Legal protection can also be acquired by sufficient public recognition.
Nice classification, 10th edition
Trademark protection may be acquired for all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, holograms, colours, combinations or shades of colours, three-dimensional forms, the three dimensional form of a good or its packaging, sound marks and any combination of the mentioned signs.
The following trademark types may be registered: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The application needs to be filed before the Hungarian Intellectual Property Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Though the Hungarian Intellectual Property Office performs a search for prior rights and sends it to the applicant before publishing the mark, it is up to the applicant whether he takes the risk of later oppositions or cancellation actions after publication of the application. The Office may reject applications only on absolute grounds (if no opposition is filed).
The processing time from first filing to registration is approx. 7 to 9 months.
After registration the trademark is published in the official gazette of the Office (“Szabadalmi Közlöny és Védjegyértesítő”).
The opposition period is 3 months from publication of the trademark.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or has not been used later for 5 years continuously, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no third party has applied for an identical or similar trademark in the meantime and if no party has requested cancellation due to non-use.
The official fee is HUF 74,800.00 (approx. EUR 270.00) for the first 3 classes, HUF 32,000.00 (approx. EUR 120.00) for the fourth and each additional class.
Trademark Licence Agreement
A licence agreement can be concluded orally or in writing, but it is advisable to grant licences in writing for evidentiary purposes. The trademark law does not provide for the protection of unregistered trademarks. Licensing may be restricted to either all or some of the goods or services in respect of which the mark is registered. There are exclusive and simple licences. In the case of an exclusive licence the proprietor may also use the trademark, unless this is expressly excluded by the contract. He may terminate the exclusivity of a licence subject to a proportional reduction in the royalty, if the licensee does not commence using the trademark within a reasonable period of time. The sale of a registered mark does not automatically terminate the licence agreement.
There are the following provisions applicable in the absence of precise regulation within the licence agreement:
1. The proprietor shall warrant that no third party rights restrict or hinder the use of the trademark.
2. The proprietor shall inform the licensee of all facts and rights related to the trademark.
3. The proprietor may exercise quality control.
4. Exclusivity shall be explicitly provided for in the contract.
5. Sub-licensing requires the proprietor’s explicit consent.
If not explicitly provided for otherwise in the contract, the licence is deemed to cover all goods and services for which the trademark is registered and any mode and extent of use without limitation as to time or territory.
There are provisions in law for the voluntary recordal of a licensee with the Hungarian Intellectual Property Office. Non recordal does not result in the invalidity of the licence agreement, but several rights, such as instituting an infringement action or filing an opposition, can be only be exercised by a registered licensee. There is no time frame for a recordal and no prescribed form or content for a licence agreement. In the event that a recordal is re-quested and arranged through a representative a power of attorney is required.
A licence agreement becomes effective and enforceable against third parties from the date of its recordal and is published in the Official Journal of the Hungarian Intellectual Property Office. Publication is mandatory but it is not required for the licence to be effective.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and can call upon the owner to institute infringement proceedings. A registered licensee may institute proceedings for trademark infringement in his own name if the licensor fails to take action for 30 days after having been called upon by the licensee. The licensee is not required to cite the trademark owner as co-defendant in any such proceedings.
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