Change is part of everyday life. Some changes are temporary, some more permanent while we adapt to various challenges. However, particular attention should be paid to scenarios where the changes affect registered data.
If you move or your company changes seat, you must notify all relevant parties about it, including your clients, lenders, friends, business partners, service providers, authorities and others. And if you own a trademark, don't forget to notify the respective intellectual property office of the changes. Why? What will happen if you overlook this obligation? Well, you might lose your trademark, as an example from practice will show.
A Hungarian case study of untidy records and a cancelled trademark registration
Schoenherr Hungary initiated a cancellation action against an international trademark with a Hungarian designation due to alleged non-use of the trademark. In this case it is the trademark owner's responsibility to prove the use of the trademark in Hungary. As the trademark owner had no legal representative registered in the trademark database in Hungary, the Hungarian Intellectual Property Office (HIPO) forwarded its order to prove the use of the trademark to its registered address. But the trademark owner forgot to notify the HIPO (or the World Intellectual Property Office) that its address had changed. So the HIPO's letter was returned as undelivered.
Pursuant to the Hungarian Trademark Act, the trademark register will be construed as authentic proof of the rights and facts registered therein. Any changes in the data can be updated in the trademark register only based on a written request by the trademark owner or its representative. The HIPO has no legal obligation to determine whether registered data are outdated.
In the case at hand, the HIPO served its decisions to the trademark owner by the legally recognised way of public announcement, which is a notice with the addressee and a short description of the decision published in the Official Gazette and on the HIPO's website. Fifteen days after the publication, there is a presumption that the decision has been served successfully to its addressee. As the trademark owner in this case failed to submit evidence regarding the use of the trademark and did not appear at the hearing after successful service of the HIPO's orders by way of public announcement, its trademark was cancelled.
The trademark owner challenged the decision of the HIPO before the court. It alleged that by serving its order by way of public announcement and not conducting its own research, the HIPO breached Article 5 of the Madrid Protocol, under which "Invalidation [...] may not be pronounced without the holder of such international registration having, in good time, been afforded the opportunity of defending his rights."
The court did not agree with the (now ex-) trademark owner, however, and stressed that it was its responsibility to keep the data in the trademark register up to date. If the registered address is outdated, it is the trademark owner's duty to check the public announcements concerning its trademark. Therefore, the court (and following an appeal, the second instance court as well) upheld the decision of the HIPO cancelling the trademark from the register.
Don't forget
As we can see, a careless approach to updating the trademark register can result in the loss of a trademark. It is therefore vital to ensure that all details in the trademark register are correct and up to date. To avoid disaster, pay special attention to address changes, changes in the name of the owner, timely registration of the assignment of a trademark, and timely deletion of registered pledges.
"A careless approach to updating the trademark register can result in the loss of a trademark. It is therefore vital to ensure that all details in the trademark register are correct and up to date."
Registered data are usually updated by intellectual property offices free of charge or for a small fee, so cost considerations are no excuse for postponing this obligation, especially compared to the potential monetary loss if the trademark is cancelled.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
