Opposition

The proceeding of trademark registration has changed on May 1st, 2004. Implementing the international practice, Hungary has switched to an opposition system. The Hungarian Intellectual Property Office (HIPO) indicates earlier identical or similar trademarks in its search report. The pure existence of these marks however does not establish a ground for refusal, unless the owner of the earlier right submits an observation within three months after publication. In these cases the proceedings before the Office move on with both parties involved in a contentious process – with a possibility of settlement, of course.

Procedure

Oppositions may only be filed after publication. To start an opposition process or for taking over the representation we need a scanned copy of the power of attorney (POA) signed by the opponent.

The timeframe for the first instance of the opposition process before the HIPO is approximately 5-8 months. In Hungary there is a 3 level system with 2 appeals in case of oppositions, the two appeal phases are handled by the courts.

Legislation:
Trademark Act

5 year rule

If the mark of the opponent has been registered more than 5 years ago, the question is whether the mark has been put to use in commerce, and what was the scope of the actual use. In the adversarial part of an opposition the applicant of the opposed mark may refer to the fact that the opponent`s mark is more than 5 years old, and also ask HIPO to request the opponent to prove the genuine use of its trade marks (if the trade mark of the opponent was registered more than 5 years ago). In this case the opponent must furnish proof that, during the period of five years preceding the date of publication of your application, his trade mark has been put to genuine use in connection with the goods or services on which the opposition was based. (The opponent can prove as well that there are proper reasons for non-use.) In the absence of proof the opposition will be rejected by the HIPO. If the earlier trademarks have been used regarding only a part of the relevant goods or services then only these will be taken into consideration. If the opponent`s mark is a national mark or a WIPO mark, use in Hungary will have to be proved.

Observation

There are two ways to make an objection against a trademark application in Hungary:

– the opponent can submit an opposition in which the claim is usually that the similarity of this new trademark is so high to the opponent`s own mark that there is a likelihood of confusion,
– the opponent can submit an observation to the HIPO in which the opponent may claim that an absolute ground of refusal is applicable (bad faith, the word is descriptive by nature, it has no distinctive power etc.).

We can represent you in both proceedings. Each proceeding has similar costs, the difference is that by filing an observation you do not become party to the registration process so – apart from the observation itself – there will be no further actions needed or costs incurred in that case. Also, there is no official fee in case you file an observation.

Trademark watch

How would the owner of the earlier trademark know that it should stand up for its rights when the owner is busy engaged with the market and everyday business? The answer: with the help of our watching service. We advise you to use our watching service to be up to date and to mak sure that the protection of your registered brand remains unquestionable by other registered rights.

We offer extended trademark watch, regularly reviewing the HIPO files and applications, the Hungarian company register and domains, the European CTM register, trademarks filed according to Madrid Agreement and Protocol and the entire web for any form of illegal use of the presented mark. For more details please click on the `Watching service` in the menu.

gototop home