Crucial amendments to the Hungarian Trademark Act entered into force on 1 January 2023. This Legal Insight briefly describes the most important changes.
Amendments aiming to accelerate the proceedings
1. New rules for deadline extensions
The legislator put an end to the practice of prolonging the Hungarian Intellectual Property Office's (HIPO) proceedings by repeated, lengthy deadline extensions.
Until the end of 2022, the deadlines not specified by the Trademark Act could be extended upon request three times, by a maximum of three months per each extension (i.e. resulting already in a nine-month extension of the original deadline). In particularly justified cases, however, the deadline could be extended even more than three times, and for longer than three months per extension.
Following the amendment, the deadlines not specified in the Trademark Act may be extended once, by up to three months on request. Further extensions or extensions up to six months per request may be granted only in particularly justified cases.
2. Rules for postponing hearings
Following the amendment, the rules for postponing the HIPO's hearing will be clarified in the Trademark Act. The hearing may be postponed only by a justified, joint request of the parties. If it is submitted at least three days before the hearing, the HIPO must postpone the hearing, otherwise it is up to the HIPO's discretion. To prevent further delays, the new date for the hearing must be set at the same time when the HIPO decides on the postponement.
3. New deadline for serving the decision promulgated at the hearing
If the HIPO's decision is promulgated at a separate oral hearing set for this purpose, it must be served in writing to the parties being present at the hearing immediately (i.e. the physical copy of the decision must be handed over to the parties). The HIPO must send the written decision to the parties who are not present at the hearing within three days.
Amendments to opposition and cancellation actions
1. Not only registered licensees can initiate proceedings
Before the amendment, only licensees registered in the Trademark Register could initiate opposition proceedings and cancellation actions in Hungary. As of 1 January 2023, any licensee holding a licence agreement can initiate these proceedings, irrespective of registration.
2. Electronic communication is not mandatory
Although electronic communication is mandatory for companies and legal representatives in almost all other types of proceedings in Hungary, proceedings before the HIPO remain an exception.
Nevertheless, the HIPO provides the possibility for electronic communication upon request. A welcome novelty of the new amendments is that it is no longer mandatory to appear in person at the HIPO's premises to inspect case files. The HIPO can also provide access electronically.
3. Possibility to stay the proceedings
The amendments introduce the stay of the proceedings in cancellation actions upon joint request of the parties. The stay of the proceedings can be requested once, for a period of at most six months. The proceedings continue upon the request of any of the parties. In proceedings where ex officio continuation is not possible (e.g. if the cancellation action is based on relative grounds of refusal), and none of the parties request the continuation of the proceedings within six months, the proceedings terminate.
In opposition proceedings, parties may request the stay of the proceedings to reach an amicable resolution of the case even before the amendments. With the latest amendments, however, the maximum term is extended to six months from the previous four months.
4. Amendments concerning the filing of oppositions
Until the end of 2022, it was sufficient to set out the grounds of opposition within the opposition deadline, similarly to opposition actions before the EUIPO. Following the amendment, it will be mandatory to also provide the detailed reasoning of the opposition and all relevant evidence within the opposition deadline. But a loophole remains: if the opposition does not comply with the legal requirements, the HIPO is still obliged to invite the opponent to remedy the deficiencies. The opposition cannot be rejected outright simply for being deficient.
It has also been clarified that if the opposition is sent by registered letter, it is deemed to have been filed on time if it was dispatched before the deadline and if the HIPO received it within two months after the expiry of the deadline.
5. Eliminating an interpretation issue regarding accelerated proceedings
The amendments clearly set forth that a cancellation action can only be conducted in an accelerated proceeding if a trademark infringement procedure or an interim measure is still ongoing or in effect concerning the trademark at the time the request for accelerated proceedings is filed.
Entry into force of the new amendments
The above provisions entered into force on 1 January 2023. The amendments to the Trademark Act were part of a comprehensive and coordinated revision of all acts regulating intellectual property. Changes were also introduced to the Patent Act, Utility Model Act and Copyright Act.
Please do not hesitate to contact us for tailor-made advice on whether these latest changes may impact your business.
By Mark Kovacs, Attorney at Law, Schoenherr