HUNGARY
HUNGARY
THE BEST WAY FOR BRAND OWNERS TO AVOID SUCH SITUATIONS IS EITHER TO OBTAIN TRADEMARK PROTECTION BY THEMSELVES, AND/OR TO ENTER A CLAUSE IN THE DISTRIBUTION AGREEMENT WITH THE AGENT.
that frames with the disputed brand were present in the market and they could purchase such frames easily from a Chinese manufacturer in the free market. Essentially, it argued that the plaintiff was only a dealer and not the rightful owner of the brand.
Tis argument caught the attention of the court, which requested the plaintiff to prove that it was the rightful owner of the brand. Tis is a requirement which goes beyond what is said in the previously cited Article 6, wherein showing that the applicant was an agent of the petitioner (plaintiff) is sufficient for the cancellation of the attacked trademark. On the contrary, in a proceeding under Article 19 (5), the plaintiff has to prove that the defendant was his agent and also that the plaintiff was the original owner of the rights to the given brand.
In the cited proceeding it was easy for the plaintiff to prove that it was the rightful owner, using a declaration of a Chinese manufacturer that the designs and orders came from the plaintiff and there was a contractual obligation between the manufacturer that the branded frames could be made and sold only to the plaintiff company. Te mere existence of a UK trademark to the same brand would not have been sufficient alone, as the owner of a trademark is not always the rightful owner of the brand in different countries.
Te Metropolitan Court closed the proceeding and decided in favour of the plaintiff. Te decision declared the assignment between the distributor and the second order defendant as null and void and ordered the HIPO to assign the trademark rights ex officio to the plaintiff. Tis part of the decision made clear that there was no need for the active re-assignment by the distributor (first order defendant) to the plaintiff, and that even if
76 World Intellectual Property Review e-Digest 2013
this defendant was liquidated and didn’t exist any more, the trademark rights would be ex officio assigned to the rightful owner.
From this proceeding several lessons can be learned. Tis is a faster and sometimes easier way to take the trademark rights away from the agent, but there is an extra burden of proof, namely that the plaintiff is the real owner of the disputed rights. Tis proof is not always as easy as it looks, and therefore the best way for brand owners to avoid such situations is either to obtain trademark protection by themselves, and/or to enter a clause in the distribution agreement with the agent that all rights to the brand belong to the selling party and the distributor/agent is not entitled to use the brand without the consent of the owner, or not entitled to obtain trademark protection to the brand in its own name.
Michael Lantos is deputy managing partner at Danubia Law Office LLC. He can be contacted at:
lantos@danubia.hu
Michael Lantos is a Hungarian and European patent and trademark attorney and was managing partner of Danubia Patent & Law Office between 1989 and 2011. Lantos specialises in patent and trademark litigation and licence- related counselling and litigation.
He is the president of
LES Hungary, vice president of the Hungarian Trade-mark Association and a member of INTA, LES, AIPPI and FICPI.
www.worldipreview.com
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