Protectability of foreign word combinations

Facts
Decisions
Comment

Facts

An applicant filed the international word mark DRIVE PILOT in Class 9 for vehicle safety software.

The Hungarian Intellectual Property Office (HIPO) refused to extend protection for the international word mark to Hungary. The rights holder contested the provisional refusal, arguing that a small degree of distinctiveness would be sufficient to enable consumers to identify the mark and the word 'pilot' is not used in relation to cars in English-speaking regions.

The HIPO refused to extend protection for the mark on the following grounds:

• The relevant public for the goods in question are consumers of luxury goods.
• In Hungary, the word 'pilot' is commonly associated with Formula 1 racing drivers.
• The words 'drive' and 'pilot' are descriptive and their combination in the mark DRIVE PILOT adds no supplemental meaning to them.

Decisions

The rights holder asked the Metropolitan Tribunal to review the HIPO's decision. The Metropolitan Tribunal upheld the HIPO's decision, asserting that although the words 'drive' and 'pilot' are of English origin, they can also be understood by the average Hungarian consumer. According to Hungarian case law, neither word could be registered as a trademark because:

• they are understood by the average Hungarian consumer; and
• their Hungarian meaning is devoid of distinctive character.

The Metropolitan Tribunal held that the HIPO was right to argue that the two-word combination DRIVE PILOT did not result in a new word with distinctive character. Although the rights holder referred to the European Court of Justice (ECJ) judgment in Baby Dry (C-383/99), the tribunal asserted that, in contrast to Baby Dry, the two-word combination in the present case referred only to words recorded in the list of goods.

The rights holder appealed the tribunal's decision to the Metropolitan Court of Appeal. Agreeing with the HIPO and the tribunal, the Metropolitan Court of Appeal held that the public associates safe driving cars with the software and therefore the international mark was descriptive. The court opined that the connection between the words specified in the list of goods and the two-word combination was evident, clear and direct – in other words, the word 'drive' principally refers to cars and the word 'pilot' also means 'driver' to the target Hungarian consumer. (The tribunal had previously observed that the Hungarian public and media refer to racing car drivers as pilots.)(1)

Comment

Hungarian case law frequently discusses the protectability of foreign word combinations. Years before Hungary's accession to the European Union, the protection of international marks was extended to Hungary and examined by the Hungarian authorities under the Paris Convention and the Nice Agreement. However, after Hungary's accession to the European Union, what was once rigorous case law has become increasingly vague. Moreover, following the ECJ's decision in Baby Dry, the HIPO and the courts have applied this doctrine to unusual word combinations.

In the case at hand, the authorities found that the international mark DRIVE PILOT did not meet the protection requirements. Therefore, the decisions reflect 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.

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.

Endnotes

(1) 8 Pkf 26 199/2018.