Likelihood of confusion decision draws on ECJ case law

Facts
Comment

Facts

The applicant filed the word combination KIWI TV in Classes 35, 41 and 42. The opponent, the owner of the EU mark PIWI + registered in the same classes, requested that the application be rejected.

The Hungarian Intellectual Property Office (HIPO) rejected the application. It referred to the general impression when comparing the two marks, referring to its own case law and that of the European Court of Justice (ECJ) – namely, Lloyd (C-9/97). The HIPO considered the word element of the device and word mark to be dominant and stated that in respect of the word element, the difference appeared only in the first syllables. Besides the visual similarity, the phonetic similarity was also found to be significant.

The opponent's mark (ie, PIWI +) makes no sense for Hungarian consumers, which is why it can be considered a novelty word, which excludes conceptual similarity. Comparing the list of goods of the two marks, the HIPO found that they were partially identical and partially similar.

The applicant requested a Metropolitan Tribunal review of the HIPO's decision, but it was rejected. The latter agreed with the HIPO regarding the possibility of confusion. The Metropolitan Tribunal held that the HIPO had correctly identified the dominant elements in the two marks. In respect of visual similarity, it could be stated that the first parts of the two marks (KIW and PIW) were similar except for their first syllables. Regarding the phonetic similarity, there was only one syllable which was different in the two marks, the two vowels were identical. With reference to Lloyd, the Metropolitan Tribunal said that as 'w' is rare in Hungarian, it can be supposed that consumers would remember that element rather than other parts of the words.

The Metropolitan Court of Appeal dismissed the applicant's appeal (8 Pkf 25 09/2019).

Comment

The HIPO and the Metropolitan Tribunal referred to ECJ case law (ie, Lloyd and CANON) with respect to the similarity of marks and goods. The examination of written and phonetic similarity provided a convincing result: a conflict of interest.

It is not exceptional for the HIPO and the Hungarian courts to follow the methods established in EU 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.

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (vida@danubia.hu). The Danubia Patent & Law Office LLC website can be accessed at www.danubia.hu.