We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
19 November 2018
The international word mark PAYSEND was registered for services, including financial, monetary and real estate services (Class 36).
The Hungarian Intellectual Property Office (HIPO) refused to grant the mark protection, holding that it is descriptive. In making its decision, the HIPO referred to the European Court of Justice's (ECJ's) judgment in Biomild (C-265/00) and stated that the average Hungarian consumer understands that the word combination 'PaySend' refers to the services covered by the mark.
The mark's owner requested a review by the Metropolitan Tribunal.
The Metropolitan Tribunal agreed with the HIPO's decision that the English terms 'pay' and 'send' are so common that the average Hungarian consumer understands them. However, the word combination 'PaySend' does not exist in the English language and could mean either:
Thus, in contrast to the HIPO, the Metropolitan Tribunal held that the mark PAYSEND 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. In light of this, the Metropolitan Tribunal held that the facts of the case were similar to the EU General Court case concerning the BABY-DRY mark (T-389/99), in which the court held that an arbitrary combination of word elements or a grammatically incorrect sign can be distinctive (3.Pk.22.935/2017).
Based on the above, the Metropolitan Tribunal annulled the HIPO's decision and ordered a new examination, after which the HIPO granted the mark protection.
The HIPO's original examination was rigorous, but its grounds were not well explained. The Metropolitan Tribunal's decision is therefore more convincing, not to mention applicant friendly.
Of note is the tribunal's reference to the EU General Court's BABY-DRY judgment rather than the ECJ's judgment concerning the same mark (C-383/99). This is surprising as the latter judgment is compulsory for EU member states, while the former is not. Although this observation may be somewhat pedantic, the Metropolitan Tribunal's decision arguably contravened the rules of legal hierarchy. Further, the EU General Court's judgment is less instructive in respect of the PAYSEND case than that of the ECJ.
Regardless of the above, the Metropolitan Tribunal's decision is welcome.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (firstname.lastname@example.org). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.