Danubia Patent and Law Office LLC

Budapest

Danubia is a leading Intellectual Property law firm in Hungary in all fields of protecting intellectual property including prosecution, maintenance, litigation, enforcement, market and use search, valuation, licensing, counseling and providing tailor-made services on demand. Danubia has been voted both as No 1 firm for Patent work and No 1 firm for Trademark work in Hungary every year since 1997 by the world IP Survey sponsored by the magazine Managing Intellectual Property.

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Intellectual Property

Every claim of opposition must be examined
Hungary | 10 August 2020

The Hungarian Intellectual Property Office (HIPO) recently rejected a trademark opposition in respect of the opponent's prior use and registered the disputed mark. However, as the HIPO failed to consider the opponent's arguments concerning copyright infringement, the Metropolitan Tribunal annulled the decision and ordered a new procedure. In the new procedure, the HIPO must examine whether the opponent sufficiently proved the alleged copyright infringement.

Hungarian authorities deem device mark SPIRIT to be misleading
Hungary | 03 August 2020

The Hungarian Intellectual Property Office (HIPO) recently issued ex officio a provisional refusal to register the international device mark SPIRIT in Hungary, holding that it was misleading because the word 'spirit' means alcohol, whereas the goods in Class 32 include mineral water, beer and soft drinks, which are not hard liquors. The Metropolitan Tribunal subsequently confirmed the HIPO's conclusion.

Protectability of foreign word combinations
Hungary | 13 July 2020

Hungarian case law frequently discusses the protectability of foreign word combinations. In a recent case, the authorities found that the international mark DRIVE PILOT did not meet the protection requirements. The decisions reflected established case law on the right to refuse protection for an international word mark in Hungary where the words are understood by the average Hungarian consumer and are descriptive.

Procedural law trumps substantive law: Aldi fails to prove use of mark
Hungary | 16 March 2020

In a recent trademark opposition case, Aldi – one of the biggest supermarket chains in Hungary – was unable to prove use of its mark in Hungary because it filed evidence of use only in Spain and the United Kingdom. Further, the evidence that Aldi did file was insufficient. As neither the Hungarian Intellectual Property Office nor the Metropolitan Tribunal can undertake an investigation ex officio, neither entity explicitly examined Aldi's reputation in Hungary, despite the fact that they were likely well aware of it.

Appreciation of likelihood of confusion
Hungary | 02 March 2020

A recent Metropolitan Tribunal ruling serves as a useful reminder that decisions on likelihood of confusion always contain subjective elements. Quoting European Court of Justice case law, the tribunal appreciated the degree of distinctiveness and danger of confusion in the case at hand, but not the elements of the two opposed marks.

All that jazz: bad-faith trademark applications
Hungary | 20 January 2020

Hungarian case law has prohibited acting in bad faith for centuries – particularly since the introduction of the Civil Code 1958 and the Trademark Act 1979. As a result, there are few examples of bad-faith trademark cases. A recent case involving the JAZZY PUB and JAZZY marks aligns Hungarian case law with that of the European Court of Justice, which holds that a finding of bad faith can be made if an applicant was aware of a prior mark when it filed its application.

Free-riding on reputation of LOUIS VUITTON mark
Hungary | 16 December 2019

There have been relatively few 'free-riding' trademark cases in Hungary since the country's laws were harmonised with EU law in 1997. However, in a case involving the unfair use of the LOUIS VUITTON mark, the courts' decisions correspond to, and provide a helpful reminder of, the European Court of Justice's test for determining whether a party has taken unfair advantage of a mark's reputation.

Applicant found to have acted in bad faith in order to abuse trademark protection
Hungary | 14 October 2019

The Hungarian Intellectual Property Office recently rejected a trademark application on the grounds of bad faith, finding that the applicant had attempted to register the mark so that he could charge a licence fee when a swimming arena with the same name commenced operations. As bad-faith decisions are rare in trademark cases, this decision would also be relevant in piracy cases.

Metropolitan Tribunal rules lack of similarity after opponent fails to prove reputation
Hungary | 23 September 2019

Likelihood of confusion is a frequent argument in opposition or annulment proceedings and the case law in this respect is rich. This well-established case law may have motivated the opponent in a recent case to raise the argument of reputation. However, as demonstrated by this case, proving reputation with marketing and sales figures is difficult. Further, evidence of publicity is seldom sufficient.

Significance of third-party prior use in annulment proceedings
Hungary | 05 August 2019

The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.

What happens when an EU mark is not well known in Hungary?
Hungary | 15 July 2019

The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.

No victory for sports giant Decathlon: limits of enforcement based on reputed mark
Hungary | 01 July 2019

Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.

Red Bull doesn't always give you wings: trademark applicant defeated by energy drink giant
Hungary | 27 May 2019

An applicant filed to register the combination word mark R.E.D. RÓNA ENERGY DRINK, which was opposed by the owner of the RED BULL mark. The applicant argued that there was no likelihood of confusion, as the term 'Róna' (ie, plain) was the distinctive element of the applied-for mark. However, the Metropolitan Tribunal disagreed, finding that the central element of the applied-for mark was the acronym 'R.E.D.'.

Fifty shades of violet: court finds likelihood of similarity between two colour marks
Hungary | 06 May 2019

Colour combinations could be protected as trademarks under the previous Trademark Act 1969. However, single colours have only been protectable as trademarks since Hungary joined the European Union and harmonised its trademark law therewith. A recent Metropolitan Court of Appeal case concerning a colour mark for a shade of violet, which was used on chocolate packaging, is a notable example of the application of the rules on colour marks during the enforcement phase.

Who owns a mark used by multiple business parties?
Hungary | 25 March 2019

In a recent dispute between the inventor and marketer of a food supplement gel, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal had to determine the true owner of the associated word and device marks. Using EU case law as a guide, they considered the market situation, including the knowledge of consumers, and applied the principle of registration and the rule of good faith.

Facebook secures finding of likelihood of confusion by association
Hungary | 04 March 2019

In a recent trademark dispute between Facebook and the owner of the applied-for mark 'mbook – ablak a világra' (ie, 'window to the world'), the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal came to the same decision on the merits and rejected the applied-for mark, albeit for different reasons. This result is logical, as the Facebook mark is one of the most well known with regard to communication services.

Rexona fined for unfair ad: role of trademarks in comparative advertising
Hungary | 28 January 2019

The Office of Economic Competition recently fined the owner of the REXONA mark HUF30 million following an investigation into an ad which compared Rexona Invisible and NIVEA Invisible antiperspirant. The case demonstrates the important role that trademarks play in comparative advertising, as the decision discussed the REXONA and NIVEA marks which appeared in the TV ads and the fine – which is arguably high – was the result of the volume of products sold under the REXONA mark.

Novel approach to assessing similarity of services
Hungary | 17 December 2018

In a recent case, the Hungarian Intellectual Property Office (HIPO) held that the services covered by two conflicting marks were not similar and granted the applied-for mark protection in Class 35. In this regard, the HIPO took a traditional approach, bearing in mind the marks' classification and examining only the services in Class 35, which were different. However, on review, the Metropolitan Tribunal took a different approach.

Disputability of descriptiveness
Hungary | 19 November 2018

The Hungarian Intellectual Property Office recently refused to grant the word mark PAYSEND protection, holding that it is descriptive. However, the Metropolitan Tribunal disagreed, holding that the mark is a grammatically incorrect variation which does not in itself enable consumers to recognise the service which it designates. Rather, the mark comprises an invented word, which makes it distinctive.

Limits of protection of geographic names
Hungary | 22 October 2018

An application was filed to register the term #lovetokaj for goods and services. The Hungarian Intellectual Property Office (HIPO) refused to register the sign for goods, holding that the geographic name Tokaj, which is reputed and therefore cannot be registered as a trademark for wines, cannot be used for other products either. However, the Metropolitan Tribunal disagreed and ordered the HIPO to repeat its examination procedure.

Unique application of competition law in registration proceedings
Hungary | 24 September 2018

Trademark owners often allege infringement of both the Trademark Act and the Act on the Prohibition of Unfair Market Behaviour in enforcement proceedings. However, the application of competition law in registration (ie, opposition) proceedings, as demonstrated in a recent case, is new to Hungarian case law. The legal basis for this case law is Section 5(2)(a) of the Trademark Act, which allows the Metropolitan Tribunal to link claims to other laws, including competition law.

Alleged infringement of piety rights in trademark procedure
Hungary | 03 September 2018

The applicant in a recent case filed an application to register a device mark which featured the name 'Stowasser.J'. Two parties filed observations against the mark and the Association of Manufacturers of Music Instruments filed an opposition. However, the Metropolitan Tribunal held that as the observers were not named Stowasser, they could not contest the applicant's use of the name. The case also addressed the infringement of a deceased person's name where this will damage their reputation.

When is a trademark application unfair?
Hungary | 27 August 2018

In a recent decision, the Hungarian Intellectual Property Office examined only one part of the opponent's claims before rejecting them in their entirety. As such, its decision was incomplete in respect of the claims relating to unfair market behaviour, even though the parties were genuine competitors. However, the Metropolitan Tribunal remedied this error by basing its decision on Section 5(2)(a) of the Trademark Act, which relates to other branches of law, including competition law.

Licensee of similar prior mark not infringer
Hungary | 25 June 2018

Although unable to find a precedent in Hungarian case law, the Metropolitan Tribunal was still able to arrive at a convincing decision in a recent case involving a licensee's use of a mark which had been registered before the plaintiff's similar mark. Surprisingly, the plaintiff not only continued the litigation after recognising that the defendant was a licensee of the proprietor of a prior mark, but also filed an appeal.

Obtaining trademark protection for distorted terms
Hungary | 18 June 2018

Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms. A recent Metropolitan Tribunal opinion in this regard was supported by the EU General Court's judgment in Doublemint, according to which a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods.

Significance of use in opposition proceedings
Hungary | 23 April 2018

Case law clearly demonstrates that opponents in opposition and cancellation procedures must often prove the genuine use of their mark. However, whether online publicity constitutes acceptable proof of use has been the subject of debate. In a recent case, the Metropolitan Tribunal expressly recognised the role of the Internet in commerce and imposed a higher standard of use – namely, evidence of realised sales – as proof of genuine use.

Do pharmaceutical marks deserve higher level of protection?
Hungary | 12 March 2018

The Hungarian Intellectual Property Office and the Metropolitan Tribunal recently dismissed an opposition of an applied-for mark on the basis that there was no likelihood of confusion. However, the appeals court disagreed, holding, among other things, that an assessment of a likelihood of confusion is more sensitive for conflicting pharmaceutical marks than for marks designating other goods. Although the court's decision is well grounded in Hungarian case law, it has been disputed for a number of reasons.

ARILUX mark cancelled for likelihood of confusion
Hungary | 12 February 2018

The owner of the EU trademark ARIEL, registered in Class 3, recently requested the cancellation of the later mark ARILUX, registered for goods in the same class. The Hungarian Intellectual Property Office granted the request and cancelled the ARILUX mark. It found that, as the two word marks had identical beginnings and both consisted of three syllables, there was a strong similarity between them. The Metropolitan Court of Appeal upheld the ruling.

HIPO and Metropolitan Tribunal clash over assessments of descriptiveness
Hungary | 05 February 2018

The Hungarian Intellectual Property Office recently rejected an application to register a device mark featuring the term 'DRONEHUNGARY', holding that the mark's wording was descriptive. However, on review, the Metropolitan Tribunal held that a word composition is descriptive only if it is grammatically correct. This is not the first time that the HIPO has been more rigorous than the tribunal in assessing an application, especially with regard to a mark's descriptiveness.

Zero likes for mark that infringes Facebook's reputation
Hungary | 22 January 2018

Facebook recently succeeded in opposing an application to register the mark MBOOK before the Hungarian Intellectual Property Office (HIPO), the Metropolitan Tribunal and the Metropolitan Court of Appeal. Although the result of the opposition is unsurprising, the different reasoning of the HIPO and the tribunal, which resulted in the same decision, is notable. Regardless of how the HIPO and the tribunal arrived at their decisions, this case is a good example of the protection afforded to reputed marks.

When is a trademark application made in bad faith?
Hungary | 08 January 2018

As it is usually difficult to prove the existence of bad faith in respect of trademarks, case law is often reluctant to apply this prohibition. This was the case with a recent Metropolitan Tribunal case. Fortunately, the Metropolitan Court of Appeal was more flexible in this respect and interpreted the facts concerning bad faith alongside another issue, thus leading to different interpretations of the concept of due cause by the tribunal and the court.

Globalisation and the use of geographical names in trademarks
Hungary | 18 December 2017

The owner of the international trademark ELEVEN PARIS filed for an extension of protection in Hungary, which the Hungarian Intellectual Property Office (HIPO) refused on the basis that the inclusion of the geographical name Paris could be misleading. The Metropolitan Tribunal annulled the HIPO's decision and ordered it to re-examine the application. The tribunal's obiter dicta on globalisation and its consequences for the use of geographical names in trademarks are notable.

Same facts, different outcome: HIPO and Metropolitan Tribunal disagree on likelihood of confusion
Hungary | 04 December 2017

A recent Metropolitan Court of Appeal case demonstrates that the determination of likelihood of confusion is often a sensitive issue. This case is notable, as the Hungarian Intellectual Property (HIPO) and the Metropolitan Tribunal came to different conclusions after examining the same facts. Although the HIPO rejected the opposition – holding that the visual and phonetic similarities between the marks in question were weak – the tribunal (and subsequently the court) disagreed.

Upcoming amendments to Law on Utility Models
Hungary | 06 November 2017

A number of amendments to the Law on Utility Models will take effect in January 2018. The most substantial amendments are the official confirmation of simultaneous patent and utility model protection and the introduction of an option to request an opinion from the Hungarian Intellectual Property Office on novelty and inventive step. These opinions can be used in infringement cases to prevent proceedings from being suspended when a utility model's novelty or inventive step has been called into question.

Likelihood of confusion or reputation?
Hungary | 04 September 2017

In a recent case involving the EU mark THE BODYSHOP, the Hungarian Intellectual Property Office considered all of the arguments for opposition – namely, the likelihood of confusion and the prior mark's reputation. However, on review, the Metropolitan Tribunal found this to be superfluous, explaining that if a likelihood of confusion exists, reference to reputation is unnecessary.

Cancellation with respect to prior unregistered 3D mark
Hungary | 28 August 2017

The Hungarian Intellectual Property Office (HIPO) recently approved a request for the cancellation of a three-dimensional mark on the grounds of lack of distinctiveness and unlawfulness. While the Metropolitan Tribunal confirmed the lack of distinctiveness and rejected the request for review, it disagreed with the HIPO with respect to the mark's unlawfulness on the basis of the Competition Act. The case is notable, as the tribunal seldom deals so extensively with competition law in a trademark case.

HIPO on the rocks in COCKTAIL WORLD dispute
Hungary | 21 August 2017

The Hungarian Intellectual Property Office (HIPO) recently granted an opposition action in respect of the likelihood of confusion, but rejected it in respect of the prior unregistered mark's reputation. On review, the Metropolitan Tribunal agreed with HIPO in respect of the likelihood of confusion, but found that it had failed to consider the claim on the basis of copyright. In this respect, the tribunal stated that the applied-for mark was a direct copy of the prior mark, considering that the parties were competitors.

Partial cancellation of device mark for lack of use
Hungary | 15 May 2017

In a recent case, a cancellation procedure was filed based on lack of use, as the device mark had been used in conjunction with other marks owned by the producers of the goods to which it was attached. While the Hungarian Intellectual Property Office cancelled the mark, the Court of Appeal ultimately amended this decision, rejecting the opposition and maintaining protection of the mark in certain classes.

Court's likelihood of confusion finding problematic
Hungary | 08 May 2017

The Metropolitan Tribunal recently held that the Hungarian Intellectual Property Office had erred in considering that the average Hungarian consumer could understand, and would therefore not confuse, the Latin term 'vita' and the Italian term 'civita'. While this statement is convincing, the final result (ie, likelihood of confusion) is somewhat problematic.

Game over! Board game manufacturer loses opposition of non-registered sign
Hungary | 01 May 2017

The board game Gazdálkodj okosan is commercialised in Hungary; the name is not registered as a trademark, but is recorded in the Registry of Copyright Works. The Metropolitan Court of Appeal recently upheld the Hungarian Intellectual Property Office's decision to grant a third-party application to register the colour device mark GAZDÁLKODJ OKOSAN!, holding that as the prior sign lacked a distinctive character in respect of toys, it would be unjustified to reject the opposed application.

Limits of opposition decisions
Hungary | 20 March 2017

Following the Hungarian Intellectual Property Office's (HIPO's) refusal of a mark registered in Classes 32 and 33, the applicant filed for review with the Metropolitan Tribunal. The review was rejected with regard to both classes based on the likelihood of confusion. However, the Metropolitan Court of Appeal found that the request for review had been filed only in respect of the HIPO's refusal to grant protection in Class 33. As such, the tribunal's decision exceeded the request.

Court rules on likelihood of confusion
Hungary | 13 March 2017

The questions of what constitutes trademark imitation and whether there is a likelihood of confusion should always be considered on a case-by-case basis. In a recent case, although the consideration of the Metropolitan Tribunal and the Metropolitan Court of Appeal differed in respect of two points, the final result was the same: there was no likelihood of confusion.

Metropolitan Court of Appeal refuses to examine claim of special protection due to mark's reputation
Hungary | 06 March 2017

In a recent case, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal unsurprisingly found the opposition of a trademark which was based on the similarity of one letter to be exaggerated. However, what was surprising was the court's ruling that, in light of case law, the special protection available for reputed trademarks does not apply where there is no likelihood of confusion.

Do bank customers pay more attention?
Hungary | 06 February 2017

An application for the device mark EVOBANK was filed in Class 36. The rights holder of the European device mark EVO, which was protected in Classes 35, 36, 38 and 45, filed an opposition action. The Hungarian Intellectual Property Office (HIPO) allowed the opposition on the basis of – among other things – likelihood of confusion. The Metropolitan Tribunal recently agreed with the HIPO decision, holding that bank customers are particularly attentive as banking services often involve their property.

Court of Appeal rules personality right not grounds for trademark cancellation
Hungary | 23 January 2017

The Metropolitan Court of Appeal recently upheld the Metropolitan Tribunal's rejection of a cancellation action regarding a trademark that was similar to the surname of the applicant's famous great-grandfather. The court held that the right to protect an individual's reputation can be enforced only by the individual in question. Further, in trying to enforce his great-grandfather's personality rights, the applicant failed to prove that the mark or its use would be detrimental to his reputation.

Sour grapes? Metropolitan Court of Appeal rules on use of winemaker's surname in trademark
Hungary | 16 January 2017

The Metropolitan Court of Appeal recently overturned a Metropolitan Tribunal decision regarding the use of a well-known winemaker's surname in a device mark. The case was complex, as the applicant had obtained the consent of one member of the winemaker's family who was in the same profession, but not that of the winemaker. Further, there was a conflict between the law regarding property and the protection of vested rights and the law regarding the protection of someone's identity.

HIPO has some making up to do: Metropolitan Tribunal orders new examination of cosmetics trademark
Hungary | 31 October 2016

The Metropolitan Tribunal recently annulled a Hungarian Intellectual Property Office decision which refused a French rights holder's application to extend protection of its international MANHATTAN SUPERSIZE SEDUCTIVE EYES trademark for eye make-up to Hungary. The tribunal held that the fact that an applicant's nationality does not conform with the name used in its mark is not, in itself, sufficient grounds to refuse protection if there is no risk of confusion.

Conditions of summoning
Hungary | 10 October 2016

In a recent Hungarian Intellectual Property Office (HIPO) decision, a hearing notice could not be delivered to the opponent of an applied-for mark as it had moved address. The HIPO notified the opponent of a second hearing by way of a public notice, but the opponent failed to attend and the HIPO cancelled the mark only in Class 43. However, the Metropolitan Tribunal annulled the HIPO's decision on the basis that it had failed to check the tribunal's Registry of Companies for the opponent's address.

Court confirms no likelihood of confusion between MULTI-BOX and MULTIBLOC
Hungary | 19 September 2016

The holder of the EU trademark MULTIBLOC filed an opposition action against the trademark MULTI-BOX. The Hungarian Intellectual Property Office rejected the opposition on the grounds that the 'multi' element of the word composition was not distinctive and that, as a result, there was no likelihood of confusion. The Metropolitan Tribunal and the Metropolitan Court of Appeal both upheld the decision.

Proof of use: court's decision on pasta trademark leaves claimant hungry
Hungary | 08 August 2016

The Hungarian Intellectual Property Office revoked an international device mark on the grounds of non-use as the rights holder – who was the legal successor of the original proprietor – failed to provide evidence of use after the mark's transfer date. Although this decision was correct in respect of procedural law, the Metropolitan Tribunal annulled the revocation on the merits of the case; its ruling was recently upheld by the Metropolitan Court of Appeal.

Sobering ruling for Oktoberfest trademark registrant
Hungary | 18 July 2016

A Hungarian applicant recently filed a trademark application for the term Oktoberfest for malt beer and beer in Class 32 and services in Classes 41 and 43. The Hungarian Intellectual Property Office rejected the application on the basis of its lack of distinctiveness, holding that the mark was a descriptive term associated with the popular Munich beer festival. The Metropolitan Tribunal and the Metropolitan Court of Appeal both upheld the decision.

Metropolitan Tribunal proves hard nut to crack: NUTELLA mark granted limited protection
Hungary | 27 June 2016

The owner of the NUTELLA EU trademark opposed an application for the mark FRUTELLA, which was filed in Class 31. The Metropolitan Tribunal found that while there was no similarity between the two marks that would result in confusion among consumers, there was a risk of confusion by way of association. It thus granted protection to the FRUTELLA mark for all goods in Class 31 – except in regards to hazelnuts and hazelnut cream.

Mac attack proves toothless due to lack of likelihood of confusion
Hungary | 06 June 2016

McDonald's – which is known for its aggressive trademark policy – filed an opposition to the MC.KANZEE trademark on the basis of the reputation of its family of marks. The Metropolitan Court of Appeal ultimately denied the opposition, ruling that although the goods covered by the marks and the consumers of those goods were almost identical, the differences between the two marks prevailed and would be obvious to the public.

Limitation of the effect of a mark
Hungary | 09 May 2016

In a recent infringement case, the owner of the device mark HUMÁN METEOROLÓGIA sued for infringement because the defendant had used the term on his internet homepage and in the media. This case is interesting because the plaintiff was able to register a word combination that is widely used on the Internet and because the defendant did not request invalidation of the plaintiff's mark, which is the usual defence.

Courts address protection of non-registered trademark
Hungary | 18 April 2016

The courts recently considered an opposition to a trademark application based on extensive use of another non-registered mark. The application was notably refused based on competition law. The case seems to expand application of Section 5(2)(a) of the Trademark Act, which provides protection for previously used signs which are not registered as marks.

Courts consider online trademark use in non-use revocation action
Hungary | 28 March 2016

A recent case concerning a revocation action for non-use of a trademark has addressed the important new issue of online use. The Supreme Court ultimately confirmed that an enterprise's online presence is insufficient to prove use in any given country; however, European Court of Justice practice has raised serious questions over this finding.

Trademark protection granted for specific type of chocolate
Hungary | 02 November 2015

A competitor requested the cancellation of a device mark for a type of chocolate, stating that the device consisted exclusively of a shape which resulted from the nature of the product. The Intellectual Property Office rejected the cancellation request and the Metropolitan Tribunal rejected the competitor's request for review after examining whether the mark consisted exclusively of the shape of the product.

Preparing trademark licence agreements and assignments
Hungary | 10 August 2015

The regulations governing IP licensing provide a great degree of freedom for the parties to set their own conditions; however, several aspects must be taken into account when concluding such agreements. Some of these aspects apply equally to the assignment of IP rights. There are also considerations specific to trademark licensing and assignment in Hungary.

Responsibility for damages arising during preliminary injunction
Hungary | 29 June 2015

In a recent case, a pharmaceutical company filed suit against a wholesaler for patent infringement and successfully obtained a preliminary injunction. The wholesaler requested revocation of the plaintiff's patent, which resulted in the limitation of the patent's scope and the lifting of the injunction. The courts then had to consider the wholesaler's counterclaim for damages suffered during the entire duration of the injunction.

Hungarian and Community registrations for same clothing design invalidated
Hungary | 20 April 2015

In a complex design infringement case, the plaintiff attempted to enforce infringement claims simultaneously based on its Hungarian and Community registrations for the same waist warmer clothing design. The defendant counterclaimed for invalidation of the Community design and filed an invalidity action against the Hungarian design. Both actions succeeded, albeit on different grounds.

Remuneration of employee inventors: an updated guide
Hungary | 23 February 2015

The basic rules on remuneration for the inventions of employees where their inventions are used by the employer are set out in the Patent Act. For inventions made in the course of an employee's duties, the employer is required to remunerate the inventor accordingly. These inventions fall into one of three categories, each with its own set of obligations for both the employer and employee.

Metropolitan Tribunal finds well-known POLICE mark not contrary to public order
Hungary | 20 October 2014

The Metropolitan Tribunal recently issued an interesting decision concerning a rarely used prohibition in the Trademark Act. The tribunal held that the trademark application for the word mark POLICE did not contravene the principle of public order and trademark protection therefore could not be denied. The decision provides welcome clarification on what constitutes a violation of public policy or order.

Smelling of roses: court confirms position on trademark rights in perfume case
Hungary | 11 August 2014

A recent Metropolitan Court decision touches on the questions of jurisdiction in Community trademark law, exhaustion of trademark rights and the distribution of testers and selective distribution systems for luxury perfume brands. The case concerned perfume bottles sold in Hungary, although the infringement was committed by a Czech internet distributor operating in several eastern European countries.

Court prohibits use of mark for potential future infringement
Hungary | 06 May 2014

The Metropolitan Court recently established a threat of potential trademark infringement with respect to a designation for an over-the-counter anti-inflammatory drug (which had marketing authorisation) and issued an injunction prohibiting its use. This is the first decision to prohibit a designation for potential future infringement under the Trademark Law.

Budapest court upholds second medical use for Pfizer's sildenafil
Hungary | 16 December 2013

The Budapest Metropolitan Tribunal recently overturned the negative decision of the Hungarian Intellectual Property Office issued in a revocation proceeding against Pfizer, thus maintaining its second medical use patent for sildenafil in the oral treatment of erectile dysfunction. The main issue in question was the lack of inventive step, which the court analysed in light of both Hungarian and European approaches.

Courts highlight limited extent of trademark protection
Hungary | 18 November 2013

The owner of the mark BUDAPEST KRÓNIKÁJA ("chronicle of Budapest") filed suit against the author of the book Budapest Krónikája a kezdetektől napjainkig ("Chronicle of Budapest from the beginning to the present") for trademark infringement. The ensuing case was notable in highlighting the limits of the protection afforded to mark owners, especially where the dominant element of the mark is insufficiently distinctive.

Big bear trumps little bear in cheese trademark dispute
Hungary | 16 September 2013

The word MEDVE ('bear' in Hungarian) with the image of a bear is an old and popular trademark in Hungary for cheese packed in a box. A competitor developed and introduced a similar mark into the market featuring the word MACI ('little bear') and the image of a small, smiling bear. The Metropolitan Tribunal has upheld the cancellation of the MACI mark, noting that it was used with the aim of exploiting the reputation of the MEDVE mark.

Considering composite evidence of genuine use
Hungary | 22 July 2013

A dispute concerning the RABA trademark – one of the oldest and best-known Hungarian marks for vehicles – provides useful guidance on how the courts will consider composite evidence of genuine use, in which multiple documents are submitted. The courts' decisions in the case were in line with the European Court of Justice's ruling that "all relevant facts and circumstances" must be taken into account.

Court upholds preliminary injunctions against generic sildenafil-based medicines
Hungary | 20 May 2013

The Metropolitan Court of Budapest recently issued several decisions upholding preliminary injunctions against a group of generic pharmaceutical manufacturers and wholesalers that wished to make commercial use of generic sildenafil-based drug products corresponding to Pfizer's Viagra and Sildenafil Pfizer products. The court issued the decisions in a rehearing ordered by the Metropolitan Appeal Court.

A guide to the remuneration of employee inventors
Hungary | 25 February 2013

The basic rules on remuneration for the inventions of employees where their inventions are used by the employer are set out in the Patent Act. For inventions made in the course of an employee's duties, the employer is required to remunerate the inventor accordingly. However, both parties must meet certain obligations.

Court rejects appropriation of PANNÓNIA cheese trademark reputation
Hungary | 28 January 2013

The PANNÓNIA trademark, used for cheese, is well known in Hungary. Competitor Tolle filed a device mark with the word element TOLLE-PANNÓNIA, also for cheese, which was duly registered. However, the Metropolitan Court of Appeal ultimately ruled against Tolle, affirming that although TOLLE is a registered mark, its use in TOLLE-PANNÓNIA did not mitigate the likelihood of confusion with the prior PANNÓNIA mark.

Licence fee for know-how dismissed for annulled patent
Hungary | 19 November 2012

The claimants in this case claimed for a licence fee for their annulled patent, as the defendants had used their invention as know-how under the Civil Code. The first instance court allowed the claim and forced the defendants to pay for the use of this know-how. The claim was dismissed on appeal, as the code provides for secrecy of know-how and such secrecy did not exist after publication of the patent.

Misleading trademark registration letters called into question
Hungary | 05 November 2012

Trademark owners are increasingly receiving letters alleging to offer registration of international trademarks. It is obvious to specialists that such offers are misleading, but many trademark owners do not realise that the senders are impostors. With the aim to protect trademark owners, a panel was organised in which this scam was discussed.

Pfizer's injunctions protect the market for Viagra
Hungary | 13 August 2012

The Metropolitan Court has granted several preliminary injunctions against major pharmaceutical companies on the basis of probable infringement of Pfizer's medical use patent for Viagra. The generic importers and manufacturers appear to have complied with their obligation to withdraw the products from the market - a promising sign that such injunctions can be an effective strategy in Hungary.

Registering and protecting pharmaceutical trademarks
Hungary | 02 April 2012

Owners of pharmaceutical trademarks - whether national, international and Community trademarks - must ensure that they understand the legal framework surrounding their registration and use in Hungary. Protecting and maximising the benefit of such rights means being aware of issues relating to anti-counterfeiting, parallel imports and repackaging, generic substitution and domain names.

BOSS and BASS in a battle of the beers
Hungary | 06 February 2012

Trademark law across EU member states has become closely harmonised and case law is no exception. Decisions of the Hungarian Intellectual Property Office, the Metropolitan Court and the Metropolitan Court of Appeal, in a case involving the word mark BOSS and the BASS word and device marks, are consistent with the European Court of Justice's view in Canon.

Parliament passes patent law changes
Hungary | 09 January 2012

Parliament recently passed a package of proposed amendments to various IP laws. Among other things, the changes affect the validation of European patents, nullity proceedings and the process for amending the names and extent of contribution of patent and utility model inventors.

Maximising value of European patents validated under the London Agreement
Hungary | 03 October 2011

Hungary is a member of the London Agreement and its amended Patent Law allows European patents granted with an English description to be validated in Hungary on submission of a Hungarian translation of the claims alone. However, validation with the full translation appears to be the cheapest and best course if subsequent enforcement costs are considered.

Revised '.hu' registration rules: how should trademark owners protect their rights?
Hungary | 04 July 2011

Hungary's domain name rules have been amended to shorten the registration procedure. However, the system remains unique in enabling rights holders to prevent potential serious infringements before final registration of a domain name. Trademark owners should consider how the new registration mechanism may affect them.

Maintaining preliminary injunctions with restricted patent claims
Hungary | 14 February 2011

In Hungary, patent litigation is characterised by the strict and systematic separation of questions of infringement and validity. A recent decision, in which a court held that a preliminary injunction can be maintained in spite of the limitation of the scope of the patent in question, shows that this system of separation may strongly favour patentees.

Validation of European patents under London Agreement
Hungary | 31 January 2011

Hungary has joined the London Agreement. Accordingly, European patents granted since the start of 2011 can be validated by translating the claims only, provided that the description is in English. If it is in another language, an English translation of the description (and copies of any drawings) must be filed together with the Hungarian claims.

Metropolitan Appeal Court rules on limitations of prior use
Hungary | 09 August 2010

The Metropolitan Appeal Court recently sought to resolve a complex trademark dispute in a simple way, adopting a narrow and literal interpretation of the Trademark Law on prior use as a basis for opposition and cancellation. The lesson from the decision is clear: brand owners cannot rely on use alone, as registration gives clear priority.

Conditions and limitations of design and copyright protection
Hungary | 04 May 2010

Foreign practitioners and IP stakeholders are often unclear on the extent to which Hungarian copyright law covers industrial designs (ie, applied art), and whether the law can be used to prevent the use of a trademark that infringes copyright. Hungary's IP regime offers protection in both cases.

Hungary Enters Patent Prosecution Highway
Hungary | 21 December 2009

Bilateral agreements concluded recently between the Hungarian Patent Office and the Patent Offices of Japan and Finland, plus a special agreement with the Patent Office of Singapore, have created new ways of obtaining patent protection in the concerned patent office. There are a number of advantages to using the Hungarian Patent Office as an office of first application.

Preliminary Injunction Based on Hungarian Patent for Unlicensed Product
Hungary | 14 December 2009

A preliminary injunction against a pharmaceutical product was issued by a Hungarian court in a dispute over a Hungarian patent. The defence against the petitioner referred to the outcome of parallel patent cases in foreign countries in which the scope of protection was restricted and did not cover the same product.