Trademark Protection in Hungary and the EU Trademark Reform

Trademark Protection in Hungary and the EU Trademark Reform

Imre Gonda Deputy Head of Department

Trademark, Model and Design Department

Hungarian Intellectual Property Office

Structure

• Introduction

• Regulatory Environment

• Trademark Protection in Hungary

• EU Trademark Reform

USPTO - HIPO Conference

April 3-4, 2012 Budapest

Introduction

Main characteristics of TM protection in Europe

• Coexistence (national/international/CTM)

• Several ways for acquiring protection

• Flexible, adaptable to the needs of users

• Complex, but no hierarchy, interfaces

• Harmonized legal framework

• Differences in procedural law

• Sui generis protection for GI’s



Regulatory Environment

International law

- Paris Convention (HU: 1909)

- TRIPS

- Agreements (Madrid, Lisbon) (HU: 1909 & 1967)

Community law (Regional)

- TM Directive

- CTMR

- Community wide GI protection

National law (example: HU)

- Trade Mark & GI Act

- Decrees



Regulatory Environment - Community Law -

2008/95/EC TM Directive

- approximated the substantial law in the Member States [ground for refusal], but contains optional provisions

- use requirement

- no harmonization of procedural law

- CTMR is out of its scope

207/2009 Regulation on the Community Trade Mark

- authonomous / unitary character / coexistence



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Regulatory Environment - National Law -

Act No. XI of 1997. on the Protection of Trademarks and Geographical Indications

- high level of compliance with TM Directive (optional prov.)

- ex officio examination for absolute grounds only

- opposition – earlier rights (wide range)

- fast track procedures

- HIPO competent for cancellation, revocation

- E-business tools

Decree No. 16/2004 IM – on the formalities

Decree No. 19/2005 IM – fees



Absolute Grounds

- lack of distinctive character [Art. 2(2)a]

- descriptiveness [Art. 2(2)a]

- contrary to public policy or accepted principles of morality [Art. 3(1)a]

- deceptiveness [Art. 3(1)a]

- bad faith [Art. 3(1)c]

- 6ter of the Paris Convention [Art. 3(2)a]

- medals, badges, armorial bearings [Art. 3(2)b]

- religious symbols [Art. 3(2)c]

- geographical indications [Art. 3(4)]

Relative Grounds

Earlier trade mark

- identical [Art. 4(1)a]

- confusingly similar [Art. 4(1)b]

- reputation / well known [Art. 4(1)c & 4(2)]

- lapsed TM within 2 years [Art. 5(2)b]

Other earlier right

- personal right (name, personal portrayal)

[Art. 5(1)a]

- copyright [Art. 5(1)b]

- other IP right [Art. 5(1)b]

- unregistered sign [Art. 5(2)a]

- application of an agent / representative [Art. 6]

Procedure for the registration of trademarks (national - regular)

Application Publication Registration

Consider withdrawn

Sending the search report

Rejection Withdrawal Opposition

Rejection on the basis of opposition

Observation

1 month 3 months

subst. exam.

ex officio

subst. exam.

upon opp.



Accelerated procedure < 6 month

Application Publication Registration

Consider withdrawn




Observation

1 month 3 months

subst. exam.

ex officio

subst. exam.

upon opp.



Extraordinary accelerated procedure

~ 1-1,5 month

Application Publication &

registration

Consider withdrawn




Observation

1 month 3 months

subst. exam.

ex officio

subst. exam.

upon opp.



EU Trade Mark Reform Background

Milestones – so far

- TM Directive (1989), CTMR (1994)

- basic principles of CTMR: coexistence, balanced relationship between the Community and National TM systems

- increasing dominance of CTM, constant fee reduction + decay in quality

- Council Conclusion (2007) - demand for comprehensive study

- Council Conclusion (2010) - main directions for the reform

- Max Plank Study (2011)

- IP Translator (C-307/10), ONEL (C-149/11) cases

- Legislative Proposal by the COM ?



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EU Trade Mark Reform Background

Council Conclusion on the future development of CTM (May, 2007) calling on the COM:

- „start work on a comprehensive study on the overall functioning of the Community trade mark system to be completed as a matter of priority”.

Council Conclusion on the future revision of TM systems in Europe (May, 2010)

- users are satisfied with the principle of coexistence,

- need for balance relationship (CTM - National TM),

- framework provisions for cooperation, harmonization of practices

- involvement of OHIM in enforcement,

- distribution 50% of CTM renewal fee to Nat. offices USPTO - HIPO Conference


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EU Trade Mark Reform Study

Study on the Overall Functioning of the European Trade Mark System

- purpose: provide the COM in depth assessment, identify potential areas of improvement

- method: survey among users and user associations, survey among and interview with national offices and OHIM,

- conducted by the Max Planck Institute für Geistiges Eigentum (Munich)

- COM published it (8 March 2011), with strong disclaimers

- OHIM ABBC, general discussion (2 May 2011)

- Council IP WG, orientation debate (11 May 2011)



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Study on the Overall Functioning of the European Trade Mark System – conclusions

- general conclusion: no need for fundamental changes

for OHIM:

- balance in the relationship between OHIM & National Offices should be restored

- CTMR and TM Directive should be in compliance with

- quality & consistency of decisions

- tasks in enforcement



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for National TM systems:

- optional provisions of TM Directive should turn into mandatory

- TM Directive should also cover procedural law

- cancellation & revocation at the level of National Office



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for OHIM & National Offices:

- strengthening the cooperation

- distribution of renewal fee for CTM (principles)

- harmonization of practices & tools

- involvement of National Offices in the substantive examination of CTM applications (absl. grounds)



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Geographical extend of genuine use of CTM

Interpretation of Art. 15. CTMR

- doesn’t directly questions the legal value of Joint Statement

- territorial extend is an important factor

- political frontier irrelevant (within the EU)

- refuses the mechanical legal interpretation

Σ: wording of Art. 15. should be left unchanged,

assessment should be made on a case-by-case bases



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Geographical extend of genuine use of CTM

Interpretation of Art. 15. CTMR

- use should be genuine, territoriality is only one of the factors

- ECJ will define the principles (ONEL Case)

Proposal: after 15 years of coexistence, the latter national TM can not be challenged on the bases of CTM not used in the Member

State



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EU Trade Mark Reform Aftermath

After the Study – Strategic Plan of OHIM

2 pillars, 6 major lines of actions, 33 key actions

3 main objectives:

- „Build a Strong, Vibrant and Creative Organisation”

- „Increase Quality and Optimise Timeliness of Operations”

- „Promote Convergence of Practices”

Vision :

Creation of European Trademark and Design Network

(by 2015)



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EU Trade Mark Reform Aftermath

After the Study – Cooperation programs of OHIM

- established 2009, first real program launched 2010/2011

- financed from the Cooperation Fund

- involvement of users

- creation of working groups (WG)

- aim – promotion of further harmonization, modernizing National Offices, make things easier for users

- 2 inherited projects,

- 16 projects



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EU Trade Mark Reform

After the Study – Convergence programs of OHIM

- established 2011,

- involvement of National Offices and users in the WG

- aim: to identify possible area of convergence, to try and find common ground on issues where IP offices follow different practices

5 projects

- Harmonization of classification of G&S’s

- Scope of class heading

- Certain absolute grounds for refusal



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EU Trade Mark Reform results

European Observatory on Counterfeiting and Piracy & OHIM

- established 2009

- memorandum of understanding: OHIM provides technical & operational support (2011)

- Commission proposal COM(2011) 288

- approved: Parliament (2012 Febr.), Council (2012 March)

- improving the understanding of the value of IP

- raising awareness of impact of infringement

- improving online exchange of info between authorities

- fostering int. cooperation with IP offices in 3rd Countries



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EU Trade Mark Reform - forecast -

Legislative proposal from COM

- publication 3 times prolonged in the last 12 months

- „current” deadline: October 2012

difficulties in preparing the proposal:

- interests diverge

- complex legal issues (procedural harmonization)

- distribution of renewal fee (principle)

- pending cases before the ECJ

- lack of internal resources (in focus: EU unitary patent)



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Content of legislative proposal - TM Directive (assessment)

- optional provision will turn into mandatory

- alignment of TM Directive & CTMR

- attempt for procedural harmonization for registration procedure (e.g. introduction of opposition with same time limits, grounds, etc.)

- attempt for establishing competence for invalidation procedures at the level of National Offices



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Content of legislative proposal - CTMR (assessment)

- simplification of procedure

- legal bases for the introduction of further e-tools

- legal bases for cooperation between National Offices and OHIM

- distribution of 50% of renewal fee

Σ: no fundamental changes are predictable



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Thank you for kind attention!

[email protected]

Trademark Protection in Hungary and the EU Trademark Reform

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