The Hungarian Intellectual Property Office recently refused to grant the word mark PAYSEND protection, holding that it is descriptive. However, the Metropolitan Tribunal disagreed, holding that the mark is a grammatically incorrect variation which does not in itself enable consumers to recognise the service which it designates. Rather, the mark comprises an invented word, which makes it distinctive.
An application was filed to register the term #lovetokaj for goods and services. The Hungarian Intellectual Property Office (HIPO) refused to register the sign for goods, holding that the geographic name Tokaj, which is reputed and therefore cannot be registered as a trademark for wines, cannot be used for other products either. However, the Metropolitan Tribunal disagreed and ordered the HIPO to repeat its examination procedure.
Trademark owners often allege infringement of both the Trademark Act and the Act on the Prohibition of Unfair Market Behaviour in enforcement proceedings. However, the application of competition law in registration (ie, opposition) proceedings, as demonstrated in a recent case, is new to Hungarian case law. The legal basis for this case law is Section 5(2)(a) of the Trademark Act, which allows the Metropolitan Tribunal to link claims to other laws, including competition law.
The applicant in a recent case filed an application to register a device mark which featured the name 'Stowasser.J'. Two parties filed observations against the mark and the Association of Manufacturers of Music Instruments filed an opposition. However, the Metropolitan Tribunal held that as the observers were not named Stowasser, they could not contest the applicant's use of the name. The case also addressed the infringement of a deceased person's name where this will damage their reputation.
In a recent decision, the Hungarian Intellectual Property Office examined only one part of the opponent's claims before rejecting them in their entirety. As such, its decision was incomplete in respect of the claims relating to unfair market behaviour, even though the parties were genuine competitors. However, the Metropolitan Tribunal remedied this error by basing its decision on Section 5(2)(a) of the Trademark Act, which relates to other branches of law, including competition law.
Although unable to find a precedent in Hungarian case law, the Metropolitan Tribunal was still able to arrive at a convincing decision in a recent case involving a licensee's use of a mark which had been registered before the plaintiff's similar mark. Surprisingly, the plaintiff not only continued the litigation after recognising that the defendant was a licensee of the proprietor of a prior mark, but also filed an appeal.
Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms. A recent Metropolitan Tribunal opinion in this regard was supported by the EU General Court's judgment in Doublemint, according to which a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.