Grounds for opposing EU trademark applications, infringement
In the case of EU trademark applications, an opposition is filed against as much as 20% of them on grounds of infringement or other basis. Our trademark litigation attorneys in Hungary have experience in representing both sides in these procedures. We regularly file oppositions on behalf of our Clients as well as defend them against oppositions filed against their applications.
Opposing an EU trademark registration is a legal procedure that can accompany a trademark application. The deadline for submitting such an opposition is three months, starting from the publication date of the trademark registration.
- In both Hungarian and EU trademark application procedures, the trademark is published following the so-called ex officio examination.
- Then, during a three-month period, third parties (i.e., owners of previous trademarks) can file oppositions (however, as regards certain foreign national trademark applications, or in the case of an international application, some offices operate with a shorter deadline for oppositions).
- During the opposition procedure, the opposing party can indicate in writing to the competent intellectual property authority (HIPO – SzTNH -, or EUIPO) that they have objections regarding the trademark application.
- The grounds for opposing an EU trademark application are typically based on one (or more) earlier trademarks, which the opponent believes can be confused with the later trademark application due to the similarity of the signs and/or the goods and services covered; that is, according to their point of view, their earlier trademark(s) and the later trademark application can be confused with each other and they do not want this to occur.
Defense against EU trademark infringement claims
The trademark applicant naturally has the opportunity to dispute the opponent’s argument. We also provide assistance in cases of defense against EU trademark infringement claims, if our intellectual property law firm in Budapest did not act as a representative in filing the contested trademark application.
The opposition may not even be well-founded; it is important to be aware that opposition to the trademark application alone does not mean that we cannot obtain trademark protection.
During the opposition procedure, it is not unusual for the opponent and the trademark applicant to come to an agreement, sign a coexistence agreement, and close the legal dispute with a settlement.
Otherwise, the competent office will decide on the opposition: it may accept it by rejecting the trademark application in whole or in part, but it may reject the opposition as well, in which case it will register the trademark application.
- In the case of a Hungarian trademark application procedure the parties can challenge the decision of the HIPO before the Metropolitan Court of Budapest, but the court’s first-instance decision will not necessarily be final either, because any party can file an appeal against it before the Metropolitan Court of Appeal.
- In the case of an EU trademark application procedure, the first-instance decision can be appealed to the EUIPO Board of Appeal, and then a legal remedy can be sought against this decision before the Luxembourg court of the European Union.
Industrial property law – Revocation and invalidity
Revocation procedures in industrial property law may be initiated against an EU trademark if the proprietor failed to put the trademark to genuine use within five years from the registration of the trademark or if they have not used the mark for a consecutive period of five years, if the mark has become a common name for the goods or services it covers, or if it became misleading.
A trademark may be declared invalid pursuant to an application to the competent office and based on relative grounds for invalidity, that include the existence of an earlier mark or an earlier right, such as a name, a personal portrayal, a copyright, or industrial property law right.
EU trademark infringement procedures
The trademark holder has the exclusive right to use their trademark, based on which they can take action against anyone who uses the same or similar mark. This is an EU trademark infringement lawsuit.
The court has to decide whether the sign used by the defendant can be confused with the plaintiff’s trademark due to the identity or similarity of the sign and the trademark, as well as the identity or similarity of the goods and services concerned. This case also includes whether consumers can connect the sign to the previous trademark by way of mental association.
Trade secret cases and other litigation procedures
Our trademark litigation lawyers in Budapest have represented Clients in other types of procedures related to IP rights as well.
- Character infringement means the production or marketing of goods or services with such distinctive appearance, packaging, or marking – including the indication of origin, furthermore, any such name, marking, or indication of goods by which the competitor or its goods and/or services are normally recognized. This is an infringement that is penalized under the Hungarian Competition Act, however, it is generally related to the illegal use of some kind of IP right.
- In the case of trade secret cases, they are also protected under Hungarian legislation, such as secret facts, information, data, and the compilation made from them, related to economic activity and therefore possessing pecuniary value. In order to keep them secret, the holder demonstrates the behavior expected in the given situation. The holder of the secret has the right to dispose of the trade secret and has the right to take action against anyone who infringes their right.
Trade secret infringement – Legal advice from our IP law firm in Budapest
In the event of a trade secret infringement, the right holder may, based on the fact of the violation, demand, among other things:
- the cessation of the violation and the prohibition of the infringer from further violations
- the prohibition of the distribution and use of the infringing goods, their destruction, recall, or removal from circulation, in addition to the court establishing the violation
- the restoration of the state before the injury
- the reimbursement of the enrichment achieved by the infringement
Special rules apply to civil proceedings related to trade secret infringements, the purpose of which is to prevent further unauthorized persons from learning about the trade secret during the proceedings. The courts have jurisdiction in lawsuits initiated in connection with the violation of trade secrets.
Contact our trademark litigation lawyers in Budapest today!
It is crucial to appoint a representative who has experience in navigating the sensitive and complex environment of EU trademark infringement and industrial property law.
Our trademark litigation lawyers in Budapest have extensive experience with these procedures. We offer high-level legal services to our Clients in various matters pertaining to this area, including trade secret cases.
