Enforcement of Hungarian Designations of Origin in Abroad

Enforcement of Hungarian Designations of Origin in Abroad Enforcement of IP Rights in the Enlarged EU 13 th AIPPI-MIE International Conference Budapest, 8 -11. September 2005 Dr. Katalin Árva

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 1 st 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 1 st 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 1 st 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 ’ 90 s)

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