Procedural law trumps substantive law: Aldi fails to prove use of mark

Facts
Decisions
Comment

Facts

The applicant in a recent case applied to register the international device mark ALDIVA (Figure 1) for goods in Class 30 (ie, foodstuffs).

Figure 1

Aldi GmbH – the owner of the European mark ALDI (Figure 2), which was registered in Class 30 with regard to foodstuffs – filed an opposition against the Hungarian part of the international mark.

Figure 2

In its opposition, Aldi, which owned seven other European marks, cited likelihood of confusion and the reputation of its ALDI mark.

Decisions

The Hungarian Intellectual Property Office (HIPO) invited Aldi to prove that it had used its mark in the European Union. In response, Aldi filed documents proving that it had used the mark in the United Kingdom and Spain.

The HIPO observed that the documents in question were undated. Further, the manner in which they had been distributed to consumers (if at all) had not been proven.

Of Aldi's eight European marks, only one was younger than five years and therefore did not require proof of use. However, the goods and services covered by that mark were completely different to those covered by the opposed mark.

As a result of the above findings, the HIPO rejected Aldi's opposition.

Aldi filed a request for review with the Metropolitan Tribunal, which was unsuccessful. The tribunal stated that the parties had provided evidence of use (ie, by filing documents and declarations). The HIPO is prohibited from searching for such evidence on its own initiative, regardless of what it knows about a mark.

In respect of the Aldi labels which had been distributed in Spain, the tribunal held that the manner in which they had been distributed had not been proven. As such, the HIPO's decision in this respect was convincing. Further, only five invoices had been submitted in respect of use in the United Kingdom. Such a small quantity was insufficient to prove genuine use.

As the opponent was unable to prove use of its mark, the HIPO had been right not to deal with the mark's reputation (1.Pk.22.472/2017).

Comment

With 144 supermarkets, Aldi is one of the biggest supermarket chains in Hungary and its reputation is indisputable. Further, it operates in nine other European countries.

It is therefore surprising that Aldi filed evidence of use only in Spain and the United Kingdom and not Hungary, where it has been active since 2008. Further, the evidence that it did file was insufficient.

The Metropolitan Tribunal was right in saying that in such cases, the HIPO (and the tribunal) are limited to assessing and examining the documents filed by the parties. Neither entity can undertake an investigation ex officio. It is likely because of this procedural rule that Aldi did not file an appeal with the Metropolitan Court of Appeal.

Considering this rule, neither the HIPO nor the tribunal explicitly examined Aldi's reputation in Hungary, despite the fact that they were likely well aware of it.

This case is a typical example of procedural law prevailing over substantive 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.