The Hungarian Intellectual Property Office recently rejected a trademark application on the grounds of bad faith, finding that the applicant had attempted to register the mark so that he could charge a licence fee when a swimming arena with the same name commenced operations. As bad-faith decisions are rare in trademark cases, this decision would also be relevant in piracy cases.
Likelihood of confusion is a frequent argument in opposition or annulment proceedings and the case law in this respect is rich. This well-established case law may have motivated the opponent in a recent case to raise the argument of reputation. However, as demonstrated by this case, proving reputation with marketing and sales figures is difficult. Further, evidence of publicity is seldom sufficient.
The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.
The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.
Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.