Article 8(4) of the European Union Trade Mark Regulation (EUTMR) is a "catch-all" provision that allows owners of non-registered trademarks or other signs used in commerce to oppose an EUTM application. Although non-registered use-based trademarks exist in a number of the Member States, Hungarian law does not recognise unregistered trademarks as a general category of earlier rights as some common-law systems do.
From a Hungarian-law perspective, the key national provision relevant to Article 8(4) EUTMR is Article 5(2)(a) of Act XI of 1997 on the Protection of Trademarks and Geographical Indications (Hungarian Trademark Act).
Earlier use under Article 5(2)(a) of the Hungarian Trademark Act
Under this provision, a sign may not be granted trademark protection if, on the basis of a sign that has previously been actually used domestically in the course of economic activity without registration, the earlier user could prohibit its use under another law.
This wording is important. Article 5(2)(a) does not protect all prior uses. Prior use only matters if the earlier user can rely on another substantive legal rule that would allow it to stop the use of the later sign.
This provision has been amended several times historically. Since the last amendment in 2019, the following two cumulative conditions shall be proved:
Firstly, the sign in question must have been actually used earlier, in Hungary, in the course of economic activity and without registration. The relevant date is the filing or priority date of the contested application. The HIPO Guidelines[1] make clear that it is not enough to show that the sign existed before that date. The evidence must demonstrate that the sign was actually used by the party invoking this provision, and that this use took place before the filing or priority date of the contested application. The HIPO therefore examines[2] whether the documents clearly predate the filing or priority date, whether they show use by the claimant itself, whether the sign relied upon actually appears in the evidence, and whether the use was sufficiently intensive in time and geographical terms having regard to the goods or services concerned. The HIPO Guidelines[3] also make an important point about legal ownership of the use. Permitted or “passed-on” use by another person is not enough. This is illustrated by the OZIRIS case[4]. In that case, the sign had in fact been used in Hungary before the filing date, but the claim still failed because the use took place under an agreement with the Slovak proprietor. The claimant therefore could not rely on that use as its own autonomous earlier position. The 2019 amendment also changed the focus of Article 5(2)(a). Under the wording in force before 2019, this provision could be used against identical or near-identical signs but not against similar signs. However, under the current wording, identity is no longer required.
Second, the earlier user must show that the use of the applied-for sign could be prohibited under another provision of law.
The Hungarian Trademark Act does not limit which provision of law may be relied on. In principle, any applicable legal provision may serve as the basis of the objection. The key question is whether the legal basis cited in the request would allow the earlier user to prohibit the use of the applied-for sign.
In practice, the Hungarian Unfair Competition Act (Act LVII of 1996 on the Prohibition of Unfair and Restrictive Market Practices) is the most frequently invoked act.
The most important provision in this context is Article 6 of the Unfair Competition Act concerning passing off or slavish imitation (jellegbitorlás in Hungarian). If the claimant relies on Article 6, it must prove that
- the parties are competitors
- the competitor’s goods, services or identifying sign are already known on the relevant market
- the later sign is of a kind by which consumers are accustomed to recognise the competitor or its goods or services and
- the later use takes place without consent.
According to the HIPO Guidelines,[5] a competitor is generally an undertaking that is already operating or may potentially enter the relevant market. Earlier use of a sign can only serve as grounds for rejecting a later trademark application if, considering the characteristics of the market for the goods or services covered by the specification, the sign has been used to such an extent that consumers associate it with the earlier user when they see the trademark. For goods or services where the relevant consumer group consists of average consumers, this can usually only be achieved through widespread, long-standing and intensive geographical use. For example, the Hungarian IP Office cancelled the word mark “REBECCA”[6] no. M9604245 because the adverse party proved that it had adopted and continuously used that name years before the proprietor’s trademark application. In the proceedings, the adverse party submitted numerous pieces of evidence showing that they had marketed clothing products under the name 'Rebecca' prior to the contested trademark application and had continued to do so since. Based on this evidence, the Office ruled that the use of the trademark without the adverse party's consent would violate Article 6 of the Hungarian Unfair Competition Act.
Beyond passing off
In some cases, the legal basis for the application of Article 5(2)(a) has been found in other provisions of the Hungarian Unfair Competition Act. This can be seen in the Savaria Térkő case. In this case, the opponent proved that, for more than a decade before the priority date, it had consistently developed and marketed a family of paving stones identified by names corresponding to present and former Roman city names. The evidence filed by the opponent documented both the existence of that concept and its consistent implementation in the market. The applied-for sign, Savaria Térkő[7], was not identical to, or even similar to, any single earlier product name used by the opponent. For that reason, the opponent could not rely on passing off under Article 6. Nevertheless, the opponent succeeded under Article 2 of the Unfair Competition Act, the general clause on unfair market conduct, because the use of Savaria for paving stones fitted into the opponent’s established naming concept and therefore gave rise to an association-based transfer of image. On that basis, the use of the sign Savaria in relation to paving stones depended on the opponent’s consent and use without such consent amounted to unfair market conduct.[8]
Well-known marks under Article 6bis of the Paris Convention
To provide a complete picture, it should also be mentioned that Hungarian law gives limited protection to certain unregistered signs if they qualify as well-known marks within the meaning of Article 6bis of the Paris Convention. Article 4 of the Hungarian Trademark Act sets out the traditional relative grounds based on earlier trademarks, namely identity and likelihood of confusion. For this purpose, Article 4(2) adopts a broad definition of what constitutes an “earlier trademark” and apart from registered trademarks it includes a sign which, regardless of registration, is considered to be well known in Hungary under Article 6bis of the Paris Convention on the filing or priority date of the contested application. In practice, this route is extremely difficult. The HIPO Guidelines[9] stress that proving well known status usually requires a higher level of recognition than proving reputation in the sense of Article 4(1)(c), which is the national equivalent of Article 8(5) EUTMR.
Conclusion
Article 5(2)(a) of the Hungarian Trademark Act does not establish an alternative system of unregistered trademark rights. Its role is more limited: it is a corrective mechanism. It enables the user of an earlier sign to take action against a subsequent trademark application in exceptional cases. In practice, success depends on two things: proof of genuine prior commercial use in Hungary and a clear legal basis outside trade mark law, supported by sufficient evidence. In this way, Hungarian law remains registration-based, while carefully balancing legal certainty and commercial fairness.
[1] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 178, paragraph 7
[2] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 179, paragraph 3
[3] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 182, paragraph 3
[4] Decision of the Hungarian IP Office no. M9700157/13, 9 February 2000
[5] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 182, paragraph 2
[6] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 181, paragraph 4
[7] Savaria was the ancient Roman name for the modern city of Szombathely in western Hungary; “térkő” means “paving stone” in Hungarian.
[8] Decision of the Metropolitan Court no. Pk.22.343/2016/6., referred also in the Trademark Methodology Guide of Hungarian Intellectual Property Office, page 180, paragraph 7
[9] The Trademark Methodology Guide of Hungarian Intellectual Property Office, page 169, paragraph 4