Industrial property
Our law firm provides legal advice in other areas of industrial property law as well. In this framework we focus on national and international trade marks, as these systems coexist with the European Union Trade Mark system. The members of our law firm have extensive experience in questions related to applications for national or international trade marks. On the top of that, our firm deals with designs as well.
National trade marks
National trade marks have an important role alongside European Union Trade Marks, especially for undertakings which concentrate their business activity solely in the territory of Hungary.
From a trade mark law point of view, it is worthwhile to clarify the territorial scope before filing any trade mark application. In Hungary, the Hungarian Intellectual Property Office (in Hungarian: Szellemi Tulajdon Nemzeti Hivatala www.sztnh.gov.hu) is responsible for the registration of national trade marks.
Proceedings before the Hungarian Intellectual Property Office basically include the same parts as proceedings before EUIPO. One important difference in the applicable trade mark law is that the Hungarian Intellectual Property Office examines the absolute grounds for refusal from the Hungarian consumer’s point of view. This means that the basis of the examination is the Hungarian language; nevertheless, in some cases other languages come into question, too.
By contrast, EUIPO examines a trade mark application from the point of view of all the official languages of the European Union, which is an important factor when creating European Union Trade Marks.
Hence, a national trade mark application may be also an option if the respective sign is descriptive in one of the other official languages of the European Union, but is not in Hungarian. Another advantage of national trade marks is that the registration fee is lower than in the case of European Union Trade Marks.
Our law firm gives legal advice in connection with national trade marks in the following matters:
Trade mark searches;
Determining the type of the trade mark (word mark, figurative mark, colour mark, three-dimensional mark, slogan, etc.);
Determining the final form of the trade mark (word mark or figurative mark, dominant elements, mixing of descriptive and non-descriptive elements, etc.);
Determining the list of the goods and services, with special regard to the “IP TRANSLATOR” judgment of the European Court of Justice;
Preparation and electronic filing of the trade mark application;
In cases of absolute grounds, preparation of the applicant’s statement, legal advice on possible limitation of the goods and services;
Proving acquired distinctiveness through use;
- In opposition proceedings, legal representation irrespective of whether our client is the applicant or opponent, examination of earlier rights, examination of earlier use and non-use, in cases of reputed trade marks, legal advice on the type and manner of collecting evidence;
In cancellation and non-use cases, legal representation irrespective of whether our client is the owner or the party filing the cancellation, examination of earlier rights, legal advice on the type and manner of collecting evidence.
International trade marks
International trade marks: if a natural person or an undertaking intends to obtain trade mark protection outside of the European Union, this can be done through the World Intellectual Property Organization (WIPO, www.wipo.int). The basis of the international trade mark application is always an existing national trade mark or trade mark application, or a European Union Trade Mark or a European Union Trade Mark application.
The question of the registration of a sign at the international level may arise when the respective goods or services will be distributed or provided outside the territory of Hungary or the European Union. In contrast to the EUIPO and the European Union Trade Mark system, WIPO has a mainly administrative role in the proceedings of international trade marks; examination of the applications is carried out by the national trade mark offices.
Since fundamental questions (descriptiveness, distinctiveness, etc.) may arise in international proceedings as well, it is worthwhile to consider a possible international application and possible related problems even before filing the basic national application. The countries coming into question and the language spoken in such countries may be decisive factors in the future of a trademark application.
Our law firm provides comprehensive legal advice on the above issues, with special regard to the strategic planning regarding trade marks. Moreover, we provide legal support in connection with Hungarian tenders for the acquisition and maintenance of the international industrial property protection of intellectual works.
Design
Designs provide legal protection for the external form of industrial products.
If a new industrial product or article for personal use has unique appearance, legal protection of the creative idea behind such appearance can be achieved through the registration of this external form as a design. The shape and the colour of the product, the ornaments appearing on it will belong to the respective design.
Most importantly, however, design protection is applicable for unique products, which are new in the whole world and where no grounds excluding the registration exist.
Consequently, with the registration of designs the most important question is to examine whether the design is new and whether it has a circumscribed, well-seen, unique character.
Registration of a Design by the EUIPO
Since 2003 there is the possibility of acquiring legal protection for your design in the respective registration procedure before the European Union Intellectual Property Office (EUIPO previously: Office for the Harmonization of the Internal Market, OHIM, www.euipo.europa.eu) for the whole territory of the 28 Member States of the European Union. This is the so called Community Design.
One considerable difference compared to the Hungarian Design is that the applications are checked mainly for formalities by the EUIPO and additionally, to verify that the application is for a design and that the design is not contrary to public policy or morality. In accordance with this, there is no substantial examination i.e. the EUIPO does not examine whether the design in the application is new and has a unique character. Consequently, if an application meets the formal requirements as stipulated above, the EUIPO will register the design even though it is not new and does not have a unique character.
Registration of a Design by the Hungarian
Intellectual Property Office
Legal protection for a design relating exclusively to the territory of Hungary can be obtained via an application to be submitted to the Hungarian Intellectual Property Office (www.sztnh.gov.hu).
If the application meets the formal requirements, the Hungarian Intellectual Property Office carries out a search for novelty in order to ascertain the new and unique character of the design in the application. In practical terms, this means a search for earlier designs, which are similar to the one in the application and which were made available to the public before the day of application of the design in question.
Our law firm has extensive experience relating to both Hungarian and Community Designs.
Our services include examination of the novelty and uniqueness of a design. Another crucial issue is determining the office before which the proceedings should be initiated.