Danubia Patent & Law Office LLC updates

Significance of use in opposition proceedings
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • April 23 2018

Case law clearly demonstrates that opponents in opposition and cancellation procedures must often prove the genuine use of their mark. However, whether online publicity constitutes acceptable proof of use has been the subject of debate. In a recent case, the Metropolitan Tribunal expressly recognised the role of the Internet in commerce and imposed a higher standard of use – namely, evidence of realised sales – as proof of genuine use.

Do pharmaceutical marks deserve higher level of protection?
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • March 12 2018

The Hungarian Intellectual Property Office and the Metropolitan Tribunal recently dismissed an opposition of an applied-for mark on the basis that there was no likelihood of confusion. However, the appeals court disagreed, holding, among other things, that an assessment of a likelihood of confusion is more sensitive for conflicting pharmaceutical marks than for marks designating other goods. Although the court's decision is well grounded in Hungarian case law, it has been disputed for a number of reasons.

ARILUX mark cancelled for likelihood of confusion
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • February 12 2018

The owner of the EU trademark ARIEL, registered in Class 3, recently requested the cancellation of the later mark ARILUX, registered for goods in the same class. The Hungarian Intellectual Property Office granted the request and cancelled the ARILUX mark. It found that, as the two word marks had identical beginnings and both consisted of three syllables, there was a strong similarity between them. The Metropolitan Court of Appeal upheld the ruling.

HIPO and Metropolitan Tribunal clash over assessments of descriptiveness
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • February 05 2018

The Hungarian Intellectual Property Office recently rejected an application to register a device mark featuring the term 'DRONEHUNGARY', holding that the mark's wording was descriptive. However, on review, the Metropolitan Tribunal held that a word composition is descriptive only if it is grammatically correct. This is not the first time that the HIPO has been more rigorous than the tribunal in assessing an application, especially with regard to a mark's descriptiveness.

Zero likes for mark that infringes Facebook's reputation
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • January 22 2018

Facebook recently succeeded in opposing an application to register the mark MBOOK before the Hungarian Intellectual Property Office (HIPO), the Metropolitan Tribunal and the Metropolitan Court of Appeal. Although the result of the opposition is unsurprising, the different reasoning of the HIPO and the tribunal, which resulted in the same decision, is notable. Regardless of how the HIPO and the tribunal arrived at their decisions, this case is a good example of the protection afforded to reputed marks.

When is a trademark application made in bad faith?
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • January 08 2018

As it is usually difficult to prove the existence of bad faith in respect of trademarks, case law is often reluctant to apply this prohibition. This was the case with a recent Metropolitan Tribunal case. Fortunately, the Metropolitan Court of Appeal was more flexible in this respect and interpreted the facts concerning bad faith alongside another issue, thus leading to different interpretations of the concept of due cause by the tribunal and the court.

Globalisation and the use of geographical names in trademarks
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • December 18 2017

The owner of the international trademark ELEVEN PARIS filed for an extension of protection in Hungary, which the Hungarian Intellectual Property Office (HIPO) refused on the basis that the inclusion of the geographical name Paris could be misleading. The Metropolitan Tribunal annulled the HIPO's decision and ordered it to re-examine the application. The tribunal's obiter dicta on globalisation and its consequences for the use of geographical names in trademarks are notable.

Same facts, different outcome: HIPO and Metropolitan Tribunal disagree on likelihood of confusion
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • December 04 2017

A recent Metropolitan Court of Appeal case demonstrates that the determination of likelihood of confusion is often a sensitive issue. This case is notable, as the Hungarian Intellectual Property (HIPO) and the Metropolitan Tribunal came to different conclusions after examining the same facts. Although the HIPO rejected the opposition – holding that the visual and phonetic similarities between the marks in question were weak – the tribunal (and subsequently the court) disagreed.

Upcoming amendments to Law on Utility Models
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • November 06 2017

A number of amendments to the Law on Utility Models will take effect in January 2018. The most substantial amendments are the official confirmation of simultaneous patent and utility model protection and the introduction of an option to request an opinion from the Hungarian Intellectual Property Office on novelty and inventive step. These opinions can be used in infringement cases to prevent proceedings from being suspended when a utility model's novelty or inventive step has been called into question.

Likelihood of confusion or reputation?
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • September 04 2017

In a recent case involving the EU mark THE BODYSHOP, the Hungarian Intellectual Property Office considered all of the arguments for opposition – namely, the likelihood of confusion and the prior mark's reputation. However, on review, the Metropolitan Tribunal found this to be superfluous, explaining that if a likelihood of confusion exists, reference to reputation is unnecessary.

Cancellation with respect to prior unregistered 3D mark
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • August 28 2017

The Hungarian Intellectual Property Office (HIPO) recently approved a request for the cancellation of a three-dimensional mark on the grounds of lack of distinctiveness and unlawfulness. While the Metropolitan Tribunal confirmed the lack of distinctiveness and rejected the request for review, it disagreed with the HIPO with respect to the mark's unlawfulness on the basis of the Competition Act. The case is notable, as the tribunal seldom deals so extensively with competition law in a trademark case.

HIPO on the rocks in COCKTAIL WORLD dispute
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • August 21 2017

The Hungarian Intellectual Property Office (HIPO) recently granted an opposition action in respect of the likelihood of confusion, but rejected it in respect of the prior unregistered mark's reputation. On review, the Metropolitan Tribunal agreed with HIPO in respect of the likelihood of confusion, but found that it had failed to consider the claim on the basis of copyright. In this respect, the tribunal stated that the applied-for mark was a direct copy of the prior mark, considering that the parties were competitors.

Partial cancellation of device mark for lack of use
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • May 15 2017

In a recent case, a cancellation procedure was filed based on lack of use, as the device mark had been used in conjunction with other marks owned by the producers of the goods to which it was attached. While the Hungarian Intellectual Property Office cancelled the mark, the Court of Appeal ultimately amended this decision, rejecting the opposition and maintaining protection of the mark in certain classes.

Court's likelihood of confusion finding problematic
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • May 08 2017

The Metropolitan Tribunal recently held that the Hungarian Intellectual Property Office had erred in considering that the average Hungarian consumer could understand, and would therefore not confuse, the Latin term 'vita' and the Italian term 'civita'. While this statement is convincing, the final result (ie, likelihood of confusion) is somewhat problematic.

Game over! Board game manufacturer loses opposition of non-registered sign
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • May 01 2017

The board game Gazdálkodj okosan is commercialised in Hungary; the name is not registered as a trademark, but is recorded in the Registry of Copyright Works. The Metropolitan Court of Appeal recently upheld the Hungarian Intellectual Property Office's decision to grant a third-party application to register the colour device mark GAZDÁLKODJ OKOSAN!, holding that as the prior sign lacked a distinctive character in respect of toys, it would be unjustified to reject the opposed application.

Limits of opposition decisions
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • March 20 2017

Following the Hungarian Intellectual Property Office's (HIPO's) refusal of a mark registered in Classes 32 and 33, the applicant filed for review with the Metropolitan Tribunal. The review was rejected with regard to both classes based on the likelihood of confusion. However, the Metropolitan Court of Appeal found that the request for review had been filed only in respect of the HIPO's refusal to grant protection in Class 33. As such, the tribunal's decision exceeded the request.

Court rules on likelihood of confusion
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • March 13 2017

The questions of what constitutes trademark imitation and whether there is a likelihood of confusion should always be considered on a case-by-case basis. In a recent case, although the consideration of the Metropolitan Tribunal and the Metropolitan Court of Appeal differed in respect of two points, the final result was the same: there was no likelihood of confusion.

Metropolitan Court of Appeal refuses to examine claim of special protection due to mark's reputation
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • March 06 2017

In a recent case, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal unsurprisingly found the opposition of a trademark which was based on the similarity of one letter to be exaggerated. However, what was surprising was the court's ruling that, in light of case law, the special protection available for reputed trademarks does not apply where there is no likelihood of confusion.

Do bank customers pay more attention?
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • February 06 2017

An application for the device mark EVOBANK was filed in Class 36. The rights holder of the European device mark EVO, which was protected in Classes 35, 36, 38 and 45, filed an opposition action. The Hungarian Intellectual Property Office (HIPO) allowed the opposition on the basis of – among other things – likelihood of confusion. The Metropolitan Tribunal recently agreed with the HIPO decision, holding that bank customers are particularly attentive as banking services often involve their property.

Court of Appeal rules personality right not grounds for trademark cancellation
Danubia Patent & Law Office LLC
  • Intellectual Property
  • Hungary
  • January 23 2017

The Metropolitan Court of Appeal recently upheld the Metropolitan Tribunal's rejection of a cancellation action regarding a trademark that was similar to the surname of the applicant's famous great-grandfather. The court held that the right to protect an individual's reputation can be enforced only by the individual in question. Further, in trying to enforce his great-grandfather's personality rights, the applicant failed to prove that the mark or its use would be detrimental to his reputation.

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