National and Community Trademark Infringement Proceedings in Hungary

• Author: Mátyás Kapa
• Position: Professor Ph.D., Dean of the Law Faculty, “Károli Gáspár” University, Budapest
• Pages: 225-230

Page 225

Introduction

A trademark is a distinctive sign used to identify products or services. It belongs exclusively to the proprietor of the registered trademark. The primary function of the trademark is to distinguish the products and services of the proprietor from those of other entities.¹ According to Hungarian regulations, any graphically represented sign that is able to distinguish a product or service from those of other entities can be registered. The following signs can particularly be registered

- words, phrases, including names and slogans;

- letters, numbers;

- figures, images;

- two or three dimensional objects, including the shape of the product or its packaging;

- colours, colour schemes, flashlight, hologram;

- sounds;

- in addition, the combination of any of the above².

We can distinguish national, community and international trademarks. National trademarks are regulated by Act IX/1997 in Hungary, while (EC) No 40/94 regulates community trademarks. International trademarks fall under the scope of the Treaty of Madrid of 1891 and the related Madrid Protocol of 1989. In Hungary 4,246 national trademarks and 4,568 international trademarks were registered in 2007. Still in 2007 88,251 community trademarks with effect to Hungary were registered. The number of registered national trademarks has not changed compared to previous years; the number of international trademarks has decreased while the number of community trademark registrations has increased considerably. The number of national trademarks valid in Hungary was 52,093 in 2007, with 54 percent Hungarian, 21 percent American, 5 percent British and 3 percent German proprietors.

Proceedings related to trademarks fall under the scope of the Hungarian Patent Office and the court in Hungary. The competences of the Hungarian Patent Office include among other things entering trademarks into the Register, renewal, revocation and registration of trademarks. ThePage 226 proceedings of the Office are special administrative authority procedures. Trademark proceedings can be grouped into two big categories.

One of the groups includes supervision proceedings related to the decisions of the Hungarian Patent Office. These are non-litigious proceedings, carried out exclusively by the Metropolitan Court of Budapest. In 2007 236 amendment requests were filed at the Office, 49 of which were dealt with within the competence of the Office itself and 187 were forwarded to the Court.

The other group includes trademark proceedings. In these cases the person claiming property can turn directly to court in order to obtain a decision in a litigious proceeding. Within trademark proceedings, special regulations apply to infringement proceedings. In Hungary 160 infringement proceedings were initiated in 2007 and 132 in 2008.

2. Trademark infringement proceedings

On the basis of trademark rights the proprietor of the trademark has exclusive rights to use the trademark. Any other person shall refrain from disturbing the proprietor of the trademark. Trademark infringement occurs when an entity uses the trademark to mark the same or similar products or services during its business activities without permission to do so from the proprietor of the trademark.³ In case of trademark infringement, the proprietor can initiate court proceedings against the violator.

Trademark infringement proceedings in Hungary are special proceedings in Hungary. This means that the regulations of the Code of Civil Procedure as well as special regulations shall be applied. These special regulations related to trademark infringement proceedings are included in Act No. XI of 1997 on the protection of trademarks and geographical indications.

Trademark infringement proceedings fall under the competence and scope of the Metropolitan Court of Budapest exclusively. A professional judge rules in the first instance In general. In trademark infringement proceedings however the court proceeds with a council of three professional judges. In such cases the parties can be represented by an authorised patent agent.

Upon the request of the parties the court can reject admission of the public to the hearings even if the general conditions of excluding the public do not apply. In trademark infringement proceedings the parties can request provisional measures more easily and on a wider scale compared to general regulations. For example it is a general rule in Hungarian law related to court proceedings that the parties can only request provisional measures after the statement of claim has been submitted to the court. In trademark infringement procedures however a request for provisional measure can be submitted before the statement of claim has been filed. Preliminary proving can be applied in a wider scale as well. The court can however require a guarantee as a condition to initiate preliminary proving and provisional measures.

In a trademark infringement proceeding if one of the parties has made its argument plausible to the appropriate extent, the court can upon the request of the proving party oblige the opponent to present its documents or other proof it holds, as well as make possible a review and provide information on bank, financial and trade data or...