DO NOT USE THESE WORDS WHEN REGISTERING A TRADEMARK IN HUNGARY

13 June 2019

Do you plan to register a word or slogan as a trademark in Hungary? You should be careful, if you plan to refer to your company’s activities, because using general and describing words may cause problems either during the registration procedure, or later when someone else wishes to use your trademark. This time we will focus on the importance of having a unique trademark.

What can be a trademark?

At first, we have to make it clear whether one word or more words can be registered as a trademark in Hungary. The Trademark Act says that trademark protection can be granted for any signs that are able to distinguish goods or services from others, and lists some examples:

• words, combination of words, including personal names and slogans,
• letters, numerals,
• figures, pictures,
• two- or three-dimensional forms, including the shape of goods or of their packaging,
• colours, combination of colours, light signals, holograms,
• sound signals, and
• combination of the abovementioned.

Fortunately, it literally means that “words” and “combination of words” or “slogans” can be registered as trademark in Hungary.

Restrictions

However, not any kind of words, combination of words or other signs can be registered as trademark. There are several restrictions.

Concerning words or texts, we must note that the trademark must not consist exclusively of indications which designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or service, or other characteristics of the goods or services.

This way you can’t register trademarks like “super”, “best”, “cheap”, “Hungarian”, “original” etc.

Signs which have become customary in the current language or in the practices of trade are also excluded from the registration. So if there is a commonly used expression related to the field you are working, you can’t register it as a trademark, because this way you would block other people from using the same expression to describe their goods or services.

For example, if you run a real estate agency, you can’t register “Real Estates”, “Houses”, “New Homes” or other similar describing words for your activity. The same goes for terms like “Holiday”, “Travel in Europe” if you run a travel agency. The describing characteristic of the word depends on its usage on the concerned market.

What if the authority registers it anyways?

Fully descriptive trademarks cannot be registered in Hungary. However, sometimes the authority is not cautious enough to notice that a trademark is descriptive, and he registers it anyways. If this happens, you have to keep in mind that the unlawfully registered trademark can be deleted from the registry anytime in the future.

If there is no conflict in use this might not happen, however, if somebody would like to use the same expression as your trademark and they go to the court, there is no guarantee that the court will make the same decision as the authority who registered the trademark.

If the judge says that the trademark doesn’t meet the criteria described in the Trademark Act, he can delete your trademark from the registry with his decision. This means that the word or combination of words that you wanted to protect becomes available for anyone to use it for free.

What if it is only partially descriptive?

If your trademark is only partially descriptive, this doesn’t make it invalid, it can be registered. However, in case someone starts a litigation stating your trademark is similar to his, it can cause problems. If the judge compares two trademarks, he has to disregard the descriptive parts.

This means that if your trademark differs from another only in the descriptive word, you might commit trademark infringement if the other was registered earlier than yours. The contrary is also true: you can make objections in case someone wants to register a trademark conflicting the unique part of your trademark.

What we can learn from this

Concerning the above, it is very important to have unique and creative trademarks, and avoid general and descriptive words. You should consider how often that word is used on the market, and how common it is. If you can’t decide, it is better to ask for a professional help before you meet surprising decisions from the authority of registration or later on from the court.