Enforcement of IP Rights in the Enlarged EUEnforcement of IP Rights in the Enlarged EU13th 13th AIPPI-MIE International Conference

Budapest, 8-11. September 2005

Dr. Katalin Árva

Enforcement of Enforcement of

Hungarian Designations of Origin Hungarian Designations of Origin

in Abroadin Abroad

Governing acts

• Lisbon Agreement • Act XI of 1997. on the Protection of Trademarks and

Geographical Product Markings• Council Regulation (EEC) No 2081/92 of 14 July

1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs

(May 1st 2004)

Facts

• 40 registered Hungarian Geographical Product Markings (GI and DO)

• 27 filed under the Lisbon Agreement – having Hungarian national protection as national DOs or GIs as of July 1st 1997 (Act XI of 1997. on the Protection of Trademarks and Geographical Product Markings)

• 5 pending application

Designation of Origin

• Name of a region or a specific place (country);• Used for marking products which originate from such

area;• Whose exceptional quality, reputation or other

characteristic is exclusively or esentially the result of– the particular geographical environment and– the characteristic natural and human factors of this

environment.

Hungarian DOs under the Lisbon Agreement

• Filing protocol issued by OTH (predecessor of the Hungarian Patent Office);

• Applicant will be the proprietor of the rights exclusively;

• Region, geographical area of use must be identified;• Goods covered by the DO/GI must be identified as

well;

Applicants

• Political decision • State-owned companies having licence to import

Hungarian foodstuffs

MONIMPEX Foreign Trade Company

• Wines– Szekszárd, Sopron, Verpelét, Pécs-Mecsek,

Villány-Siklós, Badacsony, Debrő, Balatonfüred-Csopak, Somló, Balatonmellék, Mór, Tokaj

• Spirits– Szatmár, Kecskemét, Eger

Act XI of 1997. on the Protection of Trademarks and Geographical

Product Markings

• National Registry for DOs and GIs• Priority date: July 1st 1997• Region, goods – same as registered under the LA• Applicants – same as registered under the LA• Right holders – the protection shall be granted jointly

to those parties which produce, process or prepare products in accordance with the description of DO (same goods in the same geographical area)

• Such rightholders are not listed in the extract of the DO, only the applicants

Council Regulation No 2081/92 on the protection of GI and DO for

agricultural products and foodstuffs

• Legal definition of GI and DO• Right of filing application – group of natural persons

and/or legal entities• Description of the product – geographical area of

producing; connection with such area; methode of producing; basic materials (flavouring, etc); method of marking

Council Regulation No 2081/92 …

• Registered names shall be protected against:

(a) any direct or indirect commercial use;

(b) any misuse, imitation or evocation, expression such as 'style`, 'type`, 'method`, 'as produced in`, 'imitation` or similar;

(c) any other false or misleading indication;

(d) any other practice liable to mislead the public as to the true origin of the product.

Council Regulation No 2081/92 …

• Does not effect the definition of rightholders of the national regulations

• Does not effect the right of initiating procedures for protecting a DO

• Date of protection – as an EU DO – as of the date of the decision of the Commission granting and publishing such protection

The CSABA-story

1971 - 1997

- TERIMPEX Animal and Agricultural Product Foreign Trade Company is the applicant/owner of the CSABA (DO) for sausages and meat products under the Lisbon Agreement

- TERIMPEX has its seat in Budapest- Co-owners are: Állatforgalmi és Húsipari Tröszt

(Budapest), Gyulai Húskombinát (Gyula) - Protected region: County Békés- Local sausage manufacturers based in County Békés or

in (Békés)Csaba are excluded from the protection and the right of use of the CSABA designation of origin

1997 - 2004

- All local sausage manufacturers are entitled to use the CSABA DO for their locally produced sausage products (legal seat/address in County Békés)

- This right is arising from the Trademark Act- The right is not indicated in the Registry of

Geographical Product Markings- Still TERIMPEX is the registered proprietor of the

rights (liquidated in the ’90s)

October 2004 - nowadays

• The DO CSABA was filed for EU protection under the 2081/92 EEC

• The geographical area was reduced to the area of Gyula and Békéscsaba (two main cities of County Békés)

• The protection is not granted yet• Hungarian Patent Office entitled to grant a temporary

national protection only• International protection is still granted by the Lisbon

Agreement

The Conflict

Spring 2005 - Slovakia

Governing Law

• Lisbon Agreement – international protection• Hungarian Trademark Act

- on the content of the designation of origin;

- on the proprietors of CSABA • Slovakian Rules (Law No. 469/2003)

- possible action against misleading use and infringement

• 2081/92 EEC – not applicable – no EU protection has been granted yet for CSABA

The Holder, the User and Any Person

• Holder – recorded as holder on the extract from Registry of the Lisbon Agreement– Entited to request the Court to prohibit infringement, to remove

the consequences of the infringement, has right to be compensated for the incurred damages

• User – member of corporation or association of producers, which use the registered geographical markings

• Any Person – entitled to request the court to prohibit the use of the registered

DO on identical or similar products and to request that such products be withdrawn from the market.

But…

• ‘TAURIS Čaba’ is a registered trademark

• Could be cancelled pursuant to the Section 16 of the Slovak Trademark Act No 55/1997 since it is confusingly similar to the subject matter of other industrial property right with the earlier priority right.

Strategy

• Have exact information on the market in question– Level of protection (national, international, EU)– Content of protection of a foreign DO holder/user

• Information on the infringers • Trademark rigts

– Information of the others’ registered trademarks – start cancellation actions if necessary

– Building own trademark portfolio for a wider protection of the DO

• Have good relationship with the local IP experts

Many thanks for the great contribution of

INVENTA Patent and Trademark Attorneys

Žovicova & Žovic Patent, Trademark and Law Office

arva@sbgk.hu

www.sbgk.hu