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22 October 2018
An application was filed to register the term #lovetokaj for goods and services in Classes 9, 12, 16, 21, 25, 28, 41 and 43.
The Hungarian Intellectual Property Office (HIPO) refused to register the sign for goods (ie, Classes 9, 12, 16, 21 and 28) and allowed registration only for services (ie, Classes 41 and 43). The HIPO held 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. This is because goods containing the applied-for mark TOKAJ would exploit the area's reputation by sending a message to consumers that the goods were made there.
The applicant filed a request for review with the Metropolitan Tribunal. The request was successful, as the tribunal ordered the HIPO to repeat its examination procedure. In its decision, the tribunal held that the Hungarian translation of Section 103(2) of the EU Marketing of Agricultural Products Regulation (1308/2015) was insufficiently clear. As such, the tribunal quoted and applied the English version of the regulation to support its ruling that because the products listed in the application were not made from grapes, they were not excluded from trademark protection (1. Pk. 22. 181/2017).
As a result of the repeated examination, the HIPO allowed the mark to be registered for all of the applied-for goods.
The geographic name Tokaj has been well known for centuries – it is claimed that Tokaj wine was offered to King Louis XIV of France, who is said to have exclaimed: "this is the king of wines and the wine of kings". Further, German author Goethe refers to the reputation of Tokaj wine in Faust.
In light of this, it is unsurprising that the HIPO first granted enhanced protection to the geographic name and refused to register it for goods other than wine.
Although the tribunal's decision was correct in view of the law, this case raises questions regarding the market value of geographic names.
A number of geographic names are synonymous with certain goods, including Paris (perfumes) and Bavaria (beers). However, neither the Hungarian Trademark Act, the Paris Convention nor the EU Marketing of Agricultural Products Regulation provide for special (ie, enhanced) protection. Considering this legal situation, the tribunal's decision and the HIPO's final decision cannot be contested. However, the problem of reputed geographic names arguably deserves the attention of national and EU lawmakers.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (email@example.com). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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