1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Hungary. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any verbal, figurative, three-dimensional or combined sign capable of distinguishing the goods or services of one person from another, namely: (a) words, combinations of words, including personal names and slogans; (b) letters, numerals; (c) figures, pictures; (d) two or three-dimensional forms, including the shape of goods or of their packaging; (e) colors, combinations of colors, light signals, holograms; (f) sound signals; and (g) combinations of signs under (a)-(f).
4. Can a trademark be registered for retail and like services?
Yes. Retail and like services are registrable with the Hungarian Trademark Office.
5. How are domain names protected?
Domain names are protected by the registration of the domain name with the national domain name authority on a first come, first served basis. In general, the courts apply the same principles to domain name disputes that are applied to trademark disputes. A basic requirement for the proper ownership of a domain name is that the rights and obligations of a registrant and the registration authority arise from the registration recorded in a formal registration agreement. No specific legislation is currently in force for the protection of domain names.
6. Should a trademark be searched before filing?
In case of trademark applications filed on or after May 1, 2004 the Hungarian Patent Office will not conduct ex officio substantive examination to relative grounds for refusal. After the examination to the formal requirements the Patent Office accomplishes a substantive examination regarding the absolute grounds for refusal. Simultaneously with the ex officio examination the Hungarian Patent Office accomplishes a search for earlier trademarks ?for Hungarian, Community and International (if extended to Hungary) trademarks and trademark applications of earlier priority ?and sends the search report to the applicant.
7. How do I file?
A non-EU applicant need a professional representative. EU applicant or EU lawyer or EU patent attorney can file application but only in Hungarian.
8. What information must be provided before filing?
Before filing, an applicant must provide: ten specimens of the mark unless the mark is represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered and an executed power of attorney.
9. Is local registration the only option, or are there international alternatives?
A Hungarian application only has effect in Hungary. The Madrid Agreement and Protocol are in force in Hungary (see the entry for the Madrid Agreement and Protocol).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Hungarian application, the filing date of the home application can be claimed as the filing date in Hungary. An international registration can be based on a Hungarian registration (see the entry for the Madrid Agreement and Protocol). Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date; consult a Hungarian trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term will revalidate registration, provided that in the interim no third party has filed for, registered, or used an identical or similar mark or has started an action for cancellation for nonuse. If within a period of five years following the date of registration the proprietor has not commenced the genuine use of the trademark in the country in connection with the goods or services for which it is registered, or if such use has been suspended during an uninterrupted period of five years, trademark protection shall be subject to the legal consequences provided for in the Trademark Act. Article 34(2) of the Hungarian Trademark Act of 1997 declares that 搇apse of trademark protection by reason of non-use shall not be declared if, during the interval between expiry of the period of five years following the date of registration and filing of the request for declaring lapse by reason of nonuse, genuine use of the trademark has been started or resumed. This provision shall not apply where the commencement or resumption of use within a period of three months preceding the filing of the request occurs only after the proprietor becomes aware that decision on lapse by reason of nonuse will be requested.?/span>
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of a different form of the mark should not affect the enforceability of the registration. Consultation with a Hungarian trademark attorney is recommended.
14. Is there any advantage to using a trademark before filing an application?
Yes. Hungary recognizes prior use and, provided such prior use qualifies as substantial and nationwide use, the prior user may cancel a subsequent mark, even absent registration by the prior user. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone may apply.
16. What information is first published about an application/ registration and when is it published?
There is publication before registration. After registration the trademark is published in the Official Patent and Trade Mark Gazette for cancellation actions.
17. What kind of examination (if any) will a new application undergo?
The Hungarian Patent Office examines the absolute grounds of refusal and sends a search report to the applicant.
18. What response to official objections is required?
Official actions have to be answered within a given period. Depending on the kind of objection, the applicant may be asked to consent to amendments of the specification of goods/services. It is possible to extend the official term three times each for three months.
19. How long is the registration process?
If the application does not encounter a material objection, the registration process takes approximately 12 to 15 months.
20. What rights does an application confer?
An application can be officially cited against a later application.
21. What is the legal effect of a registration?
The registrant can use the mark exclusively, sue for infringement and cancellation, and license and assign registrations and corresponding marks.
22. Can an application be opposed or cancelled by third parties?
As of May 1, 2004, an opposition system has been introduced. Opposition can be filed before registration, cancellation can be lodged after the registration.
23. Can an application or registration be assigned?
Yes. Applications and registrations may be assigned for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is required.
26. Can an application or registration be licensed?
Only a registration can be licensed. A license can be exclusive or nonexclusive, with or without limit or term, for all or some of the registered goods/services, or for all or a part of Hungary.
27. Does a license have to be recorded?
No. Recordation is not required, but is desirable.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Hungary.
29. How long does a registration last?
The term of registration is ten years from the filing date, and is renewable for ten-year periods.
30. What is required to renew a registration?
A power of attorney (if the attorney or the address on record has changed) and payment of the fee are required.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is optional. Although ? 揤閐jegy?marking can inform others of the registered status of the mark.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. Please visit www.hpo.hu. |
