The amendments (“Amendment”) of Act XI of 1997 on the Protection of Trademarks and Geographical Indications (“Trademark Act”) accepted on 30 October 2018 and effective as of 1 January 2019 can be accessed here (in Hungarian). The Amendment aims to serve the following needs:
Therefore the amendments to be made in 2019 will extend beyond what the Directive requires. In this summary we will focus on the amendments that are based on the Directive.
The need to represent a mark graphically will be removed. In line with the Directive, the applicant must provide a representation of his mark "which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the holder". The Amendment also extends the illustrative examples of the different types of trade marks by including designations displaying motion, position, multimedia and pattern.
The Amendment repeals the relative ground of refusal based on an identical or similar trade mark registered for identical or similar goods which expired prior to two years before the application, because this ground of refusal was not provided for in the Directive.
The Amendment introduces new relative and absolute grounds for refusal related to traditional terms for wine, traditional specialities and plant variety denominations.
Pursuant to the Directive, the Amendment identifies, among others, explicitly the following acts as trade mark infringement:
The Amendment aligns the wording of the limitation of the effects of a trade mark with those in the Directive.
It also introduces the intervening right of the holder of a later registered trade mark as a defence in infringement proceedings pursuant to the Directive.
In line with the Directive, the Amendment states that the goods and services for which protection is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of such indication or term.
Moreover, with the amendments of the Ministry of Economy and Transport Decree no. 19/2005 on the on administrative fees for industrial property protection proceedings before the Hungarian Patent Office, as of the 1st of January 2019, the Hungarian trade mark application procedure changed to a single class application system, and the application of a trade mark is subject to an additional fee for each class of goods and services beyond the first class.
The Amendment clarifies the regulations on the use of trade marks within the 5-year period pursuant to the Directive and the legal consequences in the event of failing to do so. Moreover, the Amendment modifies the regulation in relation to certification and guarantee marks in line with the Directive.
Pursuant to the Directive, the Amendment introduces substantial changes to the procedure of trade mark renewal. The HIPO will inform the holder of the trade mark of the expiry of the registration at least six months before the said expiry. The request for renewal shall be submitted within a period of six months preceding the expiry of the registration, instead of the twelve month period currently applying. Moreover, the amendments will allow the holder to narrow the protection of their trade mark on paying the fees to cover only some of the goods or services for which the trade mark is registered. In this case, the registration will be renewed for those goods or services only.
Written by Balint Halasz, Bettina Kövecses