The Hungarian Intellectual Property Office (HIPO) and the Metropolitan Tribunal recently rejected a word mark application based on European Court of Justice (ECJ) case law. While it seems likely that the HIPO and the Metropolitan Tribunal would have come to the same conclusion without referring to ECJ case law, the guidance was useful for the development of a unified EU doctrine and case law.
The Hungarian Intellectual Property Office (HIPO) recently rejected a trademark opposition in respect of the opponent's prior use and registered the disputed mark. However, as the HIPO failed to consider the opponent's arguments concerning copyright infringement, the Metropolitan Tribunal annulled the decision and ordered a new procedure. In the new procedure, the HIPO must examine whether the opponent sufficiently proved the alleged copyright infringement.
The Hungarian Intellectual Property Office (HIPO) recently issued ex officio a provisional refusal to register the international device mark SPIRIT in Hungary, holding that it was misleading because the word 'spirit' means alcohol, whereas the goods in Class 32 include mineral water, beer and soft drinks, which are not hard liquors. The Metropolitan Tribunal subsequently confirmed the HIPO's conclusion.
Hungarian case law frequently discusses the protectability of foreign word combinations. In a recent case, the authorities found that the international mark DRIVE PILOT did not meet the protection requirements. The decisions reflected established case law on the right to refuse protection for an international word mark in Hungary where the words are understood by the average Hungarian consumer and are descriptive.
In a recent trademark opposition case, Aldi – one of the biggest supermarket chains in Hungary – was unable to prove use of its mark in Hungary because it filed evidence of use only in Spain and the United Kingdom. Further, the evidence that Aldi did file was insufficient. As neither the Hungarian Intellectual Property Office nor the Metropolitan Tribunal can undertake an investigation ex officio, neither entity explicitly examined Aldi's reputation in Hungary, despite the fact that they were likely well aware of it.
A recent Metropolitan Tribunal ruling serves as a useful reminder that decisions on likelihood of confusion always contain subjective elements. Quoting European Court of Justice case law, the tribunal appreciated the degree of distinctiveness and danger of confusion in the case at hand, but not the elements of the two opposed marks.
Hungarian case law has prohibited acting in bad faith for centuries – particularly since the introduction of the Civil Code 1958 and the Trademark Act 1979. As a result, there are few examples of bad-faith trademark cases. A recent case involving the JAZZY PUB and JAZZY marks aligns Hungarian case law with that of the European Court of Justice, which holds that a finding of bad faith can be made if an applicant was aware of a prior mark when it filed its application.
There have been relatively few 'free-riding' trademark cases in Hungary since the country's laws were harmonised with EU law in 1997. However, in a case involving the unfair use of the LOUIS VUITTON mark, the courts' decisions correspond to, and provide a helpful reminder of, the European Court of Justice's test for determining whether a party has taken unfair advantage of a mark's reputation.
The Hungarian Intellectual Property Office recently rejected a trademark application on the grounds of bad faith, finding that the applicant had attempted to register the mark so that he could charge a licence fee when a swimming arena with the same name commenced operations. As bad-faith decisions are rare in trademark cases, this decision would also be relevant in piracy cases.
Likelihood of confusion is a frequent argument in opposition or annulment proceedings and the case law in this respect is rich. This well-established case law may have motivated the opponent in a recent case to raise the argument of reputation. However, as demonstrated by this case, proving reputation with marketing and sales figures is difficult. Further, evidence of publicity is seldom sufficient.
The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.
The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.
Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.
An applicant filed to register the combination word mark R.E.D. RÓNA ENERGY DRINK, which was opposed by the owner of the RED BULL mark. The applicant argued that there was no likelihood of confusion, as the term 'Róna' (ie, plain) was the distinctive element of the applied-for mark. However, the Metropolitan Tribunal disagreed, finding that the central element of the applied-for mark was the acronym 'R.E.D.'.
Colour combinations could be protected as trademarks under the previous Trademark Act 1969. However, single colours have only been protectable as trademarks since Hungary joined the European Union and harmonised its trademark law therewith. A recent Metropolitan Court of Appeal case concerning a colour mark for a shade of violet, which was used on chocolate packaging, is a notable example of the application of the rules on colour marks during the enforcement phase.
In a recent dispute between the inventor and marketer of a food supplement gel, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal had to determine the true owner of the associated word and device marks. Using EU case law as a guide, they considered the market situation, including the knowledge of consumers, and applied the principle of registration and the rule of good faith.
In a recent trademark dispute between Facebook and the owner of the applied-for mark 'mbook – ablak a világra' (ie, 'window to the world'), the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal came to the same decision on the merits and rejected the applied-for mark, albeit for different reasons. This result is logical, as the Facebook mark is one of the most well known with regard to communication services.
The Office of Economic Competition recently fined the owner of the REXONA mark HUF30 million following an investigation into an ad which compared Rexona Invisible and NIVEA Invisible antiperspirant. The case demonstrates the important role that trademarks play in comparative advertising, as the decision discussed the REXONA and NIVEA marks which appeared in the TV ads and the fine – which is arguably high – was the result of the volume of products sold under the REXONA mark.
In a recent case, the Hungarian Intellectual Property Office (HIPO) held that the services covered by two conflicting marks were not similar and granted the applied-for mark protection in Class 35. In this regard, the HIPO took a traditional approach, bearing in mind the marks' classification and examining only the services in Class 35, which were different. However, on review, the Metropolitan Tribunal took a different approach.
The Hungarian Intellectual Property Office recently refused to grant the word mark PAYSEND protection, holding that it is descriptive. However, the Metropolitan Tribunal disagreed, holding that the mark is a grammatically incorrect variation which does not in itself enable consumers to recognise the service which it designates. Rather, the mark comprises an invented word, which makes it distinctive.
An application was filed to register the term #lovetokaj for goods and services. The Hungarian Intellectual Property Office (HIPO) refused to register the sign for goods, holding that the geographic name Tokaj, which is reputed and therefore cannot be registered as a trademark for wines, cannot be used for other products either. However, the Metropolitan Tribunal disagreed and ordered the HIPO to repeat its examination procedure.
Trademark owners often allege infringement of both the Trademark Act and the Act on the Prohibition of Unfair Market Behaviour in enforcement proceedings. However, the application of competition law in registration (ie, opposition) proceedings, as demonstrated in a recent case, is new to Hungarian case law. The legal basis for this case law is Section 5(2)(a) of the Trademark Act, which allows the Metropolitan Tribunal to link claims to other laws, including competition law.
The applicant in a recent case filed an application to register a device mark which featured the name 'Stowasser.J'. Two parties filed observations against the mark and the Association of Manufacturers of Music Instruments filed an opposition. However, the Metropolitan Tribunal held that as the observers were not named Stowasser, they could not contest the applicant's use of the name. The case also addressed the infringement of a deceased person's name where this will damage their reputation.
In a recent decision, the Hungarian Intellectual Property Office examined only one part of the opponent's claims before rejecting them in their entirety. As such, its decision was incomplete in respect of the claims relating to unfair market behaviour, even though the parties were genuine competitors. However, the Metropolitan Tribunal remedied this error by basing its decision on Section 5(2)(a) of the Trademark Act, which relates to other branches of law, including competition law.
Although unable to find a precedent in Hungarian case law, the Metropolitan Tribunal was still able to arrive at a convincing decision in a recent case involving a licensee's use of a mark which had been registered before the plaintiff's similar mark. Surprisingly, the plaintiff not only continued the litigation after recognising that the defendant was a licensee of the proprietor of a prior mark, but also filed an appeal.
Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms. A recent Metropolitan Tribunal opinion in this regard was supported by the EU General Court's judgment in Doublemint, according to which a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods.
Case law clearly demonstrates that opponents in opposition and cancellation procedures must often prove the genuine use of their mark. However, whether online publicity constitutes acceptable proof of use has been the subject of debate. In a recent case, the Metropolitan Tribunal expressly recognised the role of the Internet in commerce and imposed a higher standard of use – namely, evidence of realised sales – as proof of genuine use.
The Hungarian Intellectual Property Office and the Metropolitan Tribunal recently dismissed an opposition of an applied-for mark on the basis that there was no likelihood of confusion. However, the appeals court disagreed, holding, among other things, that an assessment of a likelihood of confusion is more sensitive for conflicting pharmaceutical marks than for marks designating other goods. Although the court's decision is well grounded in Hungarian case law, it has been disputed for a number of reasons.
The owner of the EU trademark ARIEL, registered in Class 3, recently requested the cancellation of the later mark ARILUX, registered for goods in the same class. The Hungarian Intellectual Property Office granted the request and cancelled the ARILUX mark. It found that, as the two word marks had identical beginnings and both consisted of three syllables, there was a strong similarity between them. The Metropolitan Court of Appeal upheld the ruling.
The Hungarian Intellectual Property Office recently rejected an application to register a device mark featuring the term 'DRONEHUNGARY', holding that the mark's wording was descriptive. However, on review, the Metropolitan Tribunal held that a word composition is descriptive only if it is grammatically correct. This is not the first time that the HIPO has been more rigorous than the tribunal in assessing an application, especially with regard to a mark's descriptiveness.
Facebook recently succeeded in opposing an application to register the mark MBOOK before the Hungarian Intellectual Property Office (HIPO), the Metropolitan Tribunal and the Metropolitan Court of Appeal. Although the result of the opposition is unsurprising, the different reasoning of the HIPO and the tribunal, which resulted in the same decision, is notable. Regardless of how the HIPO and the tribunal arrived at their decisions, this case is a good example of the protection afforded to reputed marks.
As it is usually difficult to prove the existence of bad faith in respect of trademarks, case law is often reluctant to apply this prohibition. This was the case with a recent Metropolitan Tribunal case. Fortunately, the Metropolitan Court of Appeal was more flexible in this respect and interpreted the facts concerning bad faith alongside another issue, thus leading to different interpretations of the concept of due cause by the tribunal and the court.
The owner of the international trademark ELEVEN PARIS filed for an extension of protection in Hungary, which the Hungarian Intellectual Property Office (HIPO) refused on the basis that the inclusion of the geographical name Paris could be misleading. The Metropolitan Tribunal annulled the HIPO's decision and ordered it to re-examine the application. The tribunal's obiter dicta on globalisation and its consequences for the use of geographical names in trademarks are notable.
A recent Metropolitan Court of Appeal case demonstrates that the determination of likelihood of confusion is often a sensitive issue. This case is notable, as the Hungarian Intellectual Property (HIPO) and the Metropolitan Tribunal came to different conclusions after examining the same facts. Although the HIPO rejected the opposition – holding that the visual and phonetic similarities between the marks in question were weak – the tribunal (and subsequently the court) disagreed.
In a recent case involving the EU mark THE BODYSHOP, the Hungarian Intellectual Property Office considered all of the arguments for opposition – namely, the likelihood of confusion and the prior mark's reputation. However, on review, the Metropolitan Tribunal found this to be superfluous, explaining that if a likelihood of confusion exists, reference to reputation is unnecessary.
The Hungarian Intellectual Property Office (HIPO) recently approved a request for the cancellation of a three-dimensional mark on the grounds of lack of distinctiveness and unlawfulness. While the Metropolitan Tribunal confirmed the lack of distinctiveness and rejected the request for review, it disagreed with the HIPO with respect to the mark's unlawfulness on the basis of the Competition Act. The case is notable, as the tribunal seldom deals so extensively with competition law in a trademark case.
The Hungarian Intellectual Property Office (HIPO) recently granted an opposition action in respect of the likelihood of confusion, but rejected it in respect of the prior unregistered mark's reputation. On review, the Metropolitan Tribunal agreed with HIPO in respect of the likelihood of confusion, but found that it had failed to consider the claim on the basis of copyright. In this respect, the tribunal stated that the applied-for mark was a direct copy of the prior mark, considering that the parties were competitors.
In a recent case, a cancellation procedure was filed based on lack of use, as the device mark had been used in conjunction with other marks owned by the producers of the goods to which it was attached. While the Hungarian Intellectual Property Office cancelled the mark, the Court of Appeal ultimately amended this decision, rejecting the opposition and maintaining protection of the mark in certain classes.
The Metropolitan Tribunal recently held that the Hungarian Intellectual Property Office had erred in considering that the average Hungarian consumer could understand, and would therefore not confuse, the Latin term 'vita' and the Italian term 'civita'. While this statement is convincing, the final result (ie, likelihood of confusion) is somewhat problematic.
The board game Gazdálkodj okosan is commercialised in Hungary; the name is not registered as a trademark, but is recorded in the Registry of Copyright Works. The Metropolitan Court of Appeal recently upheld the Hungarian Intellectual Property Office's decision to grant a third-party application to register the colour device mark GAZDÁLKODJ OKOSAN!, holding that as the prior sign lacked a distinctive character in respect of toys, it would be unjustified to reject the opposed application.
Following the Hungarian Intellectual Property Office's (HIPO's) refusal of a mark registered in Classes 32 and 33, the applicant filed for review with the Metropolitan Tribunal. The review was rejected with regard to both classes based on the likelihood of confusion. However, the Metropolitan Court of Appeal found that the request for review had been filed only in respect of the HIPO's refusal to grant protection in Class 33. As such, the tribunal's decision exceeded the request.
The questions of what constitutes trademark imitation and whether there is a likelihood of confusion should always be considered on a case-by-case basis. In a recent case, although the consideration of the Metropolitan Tribunal and the Metropolitan Court of Appeal differed in respect of two points, the final result was the same: there was no likelihood of confusion.
In a recent case, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal unsurprisingly found the opposition of a trademark which was based on the similarity of one letter to be exaggerated. However, what was surprising was the court's ruling that, in light of case law, the special protection available for reputed trademarks does not apply where there is no likelihood of confusion.
An application for the device mark EVOBANK was filed in Class 36. The rights holder of the European device mark EVO, which was protected in Classes 35, 36, 38 and 45, filed an opposition action. The Hungarian Intellectual Property Office (HIPO) allowed the opposition on the basis of – among other things – likelihood of confusion. The Metropolitan Tribunal recently agreed with the HIPO decision, holding that bank customers are particularly attentive as banking services often involve their property.
The Metropolitan Court of Appeal recently upheld the Metropolitan Tribunal's rejection of a cancellation action regarding a trademark that was similar to the surname of the applicant's famous great-grandfather. The court held that the right to protect an individual's reputation can be enforced only by the individual in question. Further, in trying to enforce his great-grandfather's personality rights, the applicant failed to prove that the mark or its use would be detrimental to his reputation.
The Metropolitan Court of Appeal recently overturned a Metropolitan Tribunal decision regarding the use of a well-known winemaker's surname in a device mark. The case was complex, as the applicant had obtained the consent of one member of the winemaker's family who was in the same profession, but not that of the winemaker. Further, there was a conflict between the law regarding property and the protection of vested rights and the law regarding the protection of someone's identity.
The Metropolitan Tribunal recently annulled a Hungarian Intellectual Property Office decision which refused a French rights holder's application to extend protection of its international MANHATTAN SUPERSIZE SEDUCTIVE EYES trademark for eye make-up to Hungary. The tribunal held that the fact that an applicant's nationality does not conform with the name used in its mark is not, in itself, sufficient grounds to refuse protection if there is no risk of confusion.
In a recent Hungarian Intellectual Property Office (HIPO) decision, a hearing notice could not be delivered to the opponent of an applied-for mark as it had moved address. The HIPO notified the opponent of a second hearing by way of a public notice, but the opponent failed to attend and the HIPO cancelled the mark only in Class 43. However, the Metropolitan Tribunal annulled the HIPO's decision on the basis that it had failed to check the tribunal's Registry of Companies for the opponent's address.
The holder of the EU trademark MULTIBLOC filed an opposition action against the trademark MULTI-BOX. The Hungarian Intellectual Property Office rejected the opposition on the grounds that the 'multi' element of the word composition was not distinctive and that, as a result, there was no likelihood of confusion. The Metropolitan Tribunal and the Metropolitan Court of Appeal both upheld the decision.
The Hungarian Intellectual Property Office revoked an international device mark on the grounds of non-use as the rights holder – who was the legal successor of the original proprietor – failed to provide evidence of use after the mark's transfer date. Although this decision was correct in respect of procedural law, the Metropolitan Tribunal annulled the revocation on the merits of the case; its ruling was recently upheld by the Metropolitan Court of Appeal.
A Hungarian applicant recently filed a trademark application for the term Oktoberfest for malt beer and beer in Class 32 and services in Classes 41 and 43. The Hungarian Intellectual Property Office rejected the application on the basis of its lack of distinctiveness, holding that the mark was a descriptive term associated with the popular Munich beer festival. The Metropolitan Tribunal and the Metropolitan Court of Appeal both upheld the decision.
The owner of the NUTELLA EU trademark opposed an application for the mark FRUTELLA, which was filed in Class 31. The Metropolitan Tribunal found that while there was no similarity between the two marks that would result in confusion among consumers, there was a risk of confusion by way of association. It thus granted protection to the FRUTELLA mark for all goods in Class 31 – except in regards to hazelnuts and hazelnut cream.
McDonald's – which is known for its aggressive trademark policy – filed an opposition to the MC.KANZEE trademark on the basis of the reputation of its family of marks. The Metropolitan Court of Appeal ultimately denied the opposition, ruling that although the goods covered by the marks and the consumers of those goods were almost identical, the differences between the two marks prevailed and would be obvious to the public.
In a recent infringement case, the owner of the device mark HUMÁN METEOROLÓGIA sued for infringement because the defendant had used the term on his internet homepage and in the media. This case is interesting because the plaintiff was able to register a word combination that is widely used on the Internet and because the defendant did not request invalidation of the plaintiff's mark, which is the usual defence.
The courts recently considered an opposition to a trademark application based on extensive use of another non-registered mark. The application was notably refused based on competition law. The case seems to expand application of Section 5(2)(a) of the Trademark Act, which provides protection for previously used signs which are not registered as marks.
A recent case concerning a revocation action for non-use of a trademark has addressed the important new issue of online use. The Supreme Court ultimately confirmed that an enterprise's online presence is insufficient to prove use in any given country; however, European Court of Justice practice has raised serious questions over this finding.
A competitor requested the cancellation of a device mark for a type of chocolate, stating that the device consisted exclusively of a shape which resulted from the nature of the product. The Intellectual Property Office rejected the cancellation request and the Metropolitan Tribunal rejected the competitor's request for review after examining whether the mark consisted exclusively of the shape of the product.
The owner of the mark BUDAPEST KRÓNIKÁJA ("chronicle of Budapest") filed suit against the author of the book Budapest Krónikája a kezdetektől napjainkig ("Chronicle of Budapest from the beginning to the present") for trademark infringement. The ensuing case was notable in highlighting the limits of the protection afforded to mark owners, especially where the dominant element of the mark is insufficiently distinctive.
The word MEDVE ('bear' in Hungarian) with the image of a bear is an old and popular trademark in Hungary for cheese packed in a box. A competitor developed and introduced a similar mark into the market featuring the word MACI ('little bear') and the image of a small, smiling bear. The Metropolitan Tribunal has upheld the cancellation of the MACI mark, noting that it was used with the aim of exploiting the reputation of the MEDVE mark.
A dispute concerning the RABA trademark – one of the oldest and best-known Hungarian marks for vehicles – provides useful guidance on how the courts will consider composite evidence of genuine use, in which multiple documents are submitted. The courts' decisions in the case were in line with the European Court of Justice's ruling that "all relevant facts and circumstances" must be taken into account.
The PANNÓNIA trademark, used for cheese, is well known in Hungary. Competitor Tolle filed a device mark with the word element TOLLE-PANNÓNIA, also for cheese, which was duly registered. However, the Metropolitan Court of Appeal ultimately ruled against Tolle, affirming that although TOLLE is a registered mark, its use in TOLLE-PANNÓNIA did not mitigate the likelihood of confusion with the prior PANNÓNIA mark.
The claimants in this case claimed for a licence fee for their annulled patent, as the defendants had used their invention as know-how under the Civil Code. The first instance court allowed the claim and forced the defendants to pay for the use of this know-how. The claim was dismissed on appeal, as the code provides for secrecy of know-how and such secrecy did not exist after publication of the patent.
Trademark owners are increasingly receiving letters alleging to offer registration of international trademarks. It is obvious to specialists that such offers are misleading, but many trademark owners do not realise that the senders are impostors. With the aim to protect trademark owners, a panel was organised in which this scam was discussed.
Trademark law across EU member states has become closely harmonised and case law is no exception. Decisions of the Hungarian Intellectual Property Office, the Metropolitan Court and the Metropolitan Court of Appeal, in a case involving the word mark BOSS and the BASS word and device marks, are consistent with the European Court of Justice's view in Canon.