AIPPI
AIPPI Magyar Csoportja – Hungarian Group of AIPPI
* With kind permission of Danubia Patent & Law Office, Member of the Hungarian Group, on the homepage of which the following case has been published.
The device mark No. 944 650 has been protected in Hungary since 2008. It contains 6-6 chocolate cubes, without edges, on the surface of each cube engraved stars (compass rose stars).
In 2013 a competitor requested cancellation, stating that the device consists exclusively of the shape of the product that results from the nature of the product.
The owner of the attacked mark entrusted Danubia with the defence. In a Statement it was rendered probable that the product called “Schogetten” is rather well-known in Hungary and the form acquired secondary meaning.
The Hungarian Intellectual Property Office rejected the cancellation request. Though it did not accept the proof on genuine use, holding that if the mark was excluded from protection at the date of application, this cannot be cured by use, but it held that the mark was sufficiently distinctive to be protected and the applicant was not able to prove the contrary.
The cancellation applicant filed request for review with the Metropolitan Tribunal.
This request was also rejected by the Tribunal.The latter examined also whether the attacked mark consists exclusively of the shape which result from the nature of the goods themselves or which is necessary to obtain a technical result.
In this respect the Tribunal stated that “it can be established that the subject trademark is indisputably the figure of a chocolate product, thus, its nature and the technical result to be obtained by it lie in the fact whether it is consumable. The shape of the chocolate cubes with smooth surface, without edges and being dome shaped performs this function in itself ensuring that it can be easily taken into the mouth even by children. Further, the cubes placed side by side corresponding to the layout of the trademark makes it unnecessary to split the blocks or bars being the commonly used form of chocolate product, by breaking or cutting, which is a favourable solution in hygienic or aesthetic respect. Hence these are the functions performed by the dome-shaped form of chocolate units which correspond to the disputed trademark.”.
(3.Pk.23.764/2014)
Comments
Both the Office and the Tribunal referred ex officio to the Philips/Remington judgement (C-299/99) of the EU Court of Justice, though the applicant did not quote it. Both came to the conclusion that the test explained in this does not apply to the case.
Though the Tribunal has not dealt with the motivation of the cancellation applicant, it is worthwhile mentioning that it was obvious that he requested cancellation for acquiring the Hungarian market (where he is also strongly present) for an almost identical product. In Germany he was namely condemned by the courts of first and second instance (OLG Köln) for infringing the mark the cancellation of which he requested in Hungary.
Dr. A. Vida
* With kind permission of Danubia Patent & Law Office, Member of the Hungarian Group, on the homepage of which the following case has been published.
Protection of the international mark VARIO, registered for classes 6 and 19 insulating glass system with metallic fixing pieces was refused by the Hungarian Intellectual Property Office for lack of distinctivity.
The applicant, represented by Danubia requested review with the Metropolitan Tribunal. He stated first that the term VARIO is not used in Hungarian as an alone-standing word, only as a word element. He stated also that it was harmful that the Office disregarded that the branded product is also protected by a European patent (double vitrage) of which it is the symbol.
The Tribunal annulled the decision of the Office and ordered a new procedure.The Tribunal established that in the Hungarian dictionaries the term VARIO is neither referred to nor defined, moreover in respect of the rules of Hungarian orthography it cannot be used as element of a word, only as an anterior constituent.
The Office repeated the examination procedure and referring to the Tribunal’s decision, decided to grant the mark the protection of in respect of Hungary.
(3.Pk.21.044/2014)
Comments
Though the result is satisfactory, I regret that the Tribunal dealt only with the grammatical aspect of the case. In my mind it would have been interesting to deal also with correlation between the patent and the mark considering that the mark is used as a symbol for the invention.
Dr. A. Vida
* With kind permission of Danubia Patent & Law Office, Member of the Hungarian Group, on the homepage of which the following cases were published.
The sign Olympikus was filed for goods in class 25, namely clothing, shoes, headgear.
The Hungarian Intellectual Property Office refused the application referring to Sec. 3(1)(b) i.e. for its misleading character. This ground of refusal is referred in respect of signs which indicate a special origin, type or quality, respectively a tie of positive expectation of consumers, which is not justified by the product. Considering their general impression the term OLYMPIKUS and the somewhat flatten circles refer to the Olympic Games. Consumers may reasonably think that the device is connected with the Olympic Games; the clothing was made for the latter.
The applicant requested review of the decision.
The Metropolitan Tribunal rejected the request of review. It was held that the general impression of the sign is that there is a connection with the Olympic Games. This connection is created by the word element, as well as by the graphics of the design, these elements strengthen each other and in their entirety they are suitable to mislead the consumers.
(1.Pk.20.425/2013).
Comments
1. The meaning of the word element of the applied mark is “Olympic-like”, the design element of it is different from the five-circle Olympic symbol.
2. As a result, the application was not rejected for covering the symbol of an international organisation, i.e. that of the International Olympic Committee [Sec. 3(2)(a)], but for its misleading character.
3. Typical misleading marks are “Best”, “Super”, “First”, use of which (without registration) are also prevented by competition law.
4. Another type of misleading mark is if in the list of products thereof there is any products in respect of which the trademark is misleading, e.g. TURBO DIET SHAKE for non-dietetic goods (Metropolitan Tribunal – 1.Pk.25.121/2010).
Dr. A. Vida
* With kind permission of Danubia Patent & Law Office, Member of the Hungarian Group, on the homepage of which the following case has been published.
The international device mark “pasta Zara” has been protected and also used in Hungary for several years. Owner of the mark ZARA (clothes) requested cancellation for non-use.
Though the owner of the mark represented by Danubia proved genuine use, the Office ordered cancellation for non-use as the proofs, i.e. invoices were issued by the former proprietor of the mark and not by the actual one.
The owner of the mark requested review and filed the Licence Agreement concluded between the former proprietor and him.
The Metropolitan Tribunal reversed the decision of the Office and rejected the cancellation request. It held that with the License Agreement the applicant filed with the Tribunal, the tie between the former and the actual proprietor was sufficiently proved. The Tribunal also rejected the request of the applicant to limit the mark to goods “dry pasta” who argued that the use of “fresh, deep-frozen, ready-to-use pasta” was not proven. In this latter respect the Tribunal, referring to the case-law of the EU General Court, said that as the use in respect of “pasta” was proved, this use can be considered as genuine in respect of further goods also having identical destination.
The cancellation applicant appealed against the decision.
The Metropolitan Court of Appeal dismissed the appeal. The Court reviewing the decision of the Office and Tribunal stated that the Office established that the use of the mark was proved and the cancellation request was successful only because the tie between the former and earlier proprietor was not proved. In this respect the Court said that in this case the use by the current owner is relevant, as the law connects the negative result to the use and not to the person of the owner. The appellant stated also that the invoices filed proved only modest use, moreover the owner of the mark did not prove that the Hungarian buyer sold the goods in Hungary. This reasoning was also rejected by the Court, who stated that the use was not symbolic and it was sufficient for proving the use in Hungary.
(8.Pkf.26.340/2014)
Comments
1. The Tribunal and the Court refer to the judgements of the EU General Courts in which they take position on the appreciation of the list of goods, without mentioning the numbers. Then they stress that this case-law is not obligatory for national courts, but as it is convincing, they accept it. I believe it’s worth-while referring to this case-law, appearing first in the ALADIN judgement (T-126/03, para 46), the essence of which is that “the concept of part of the goods or services cannot be taken to mean all the commercial variations of similar goods or services”.
2. In my view it is impressive that differing from the Office, the Tribunal and the Court sought to find an equity solution instead of an administratively justifiable one, considering that the stake was the withdrawal of vested rights.
Dr. A. Vida
On May 22, 2012, in its judgment No. 8.Pf.20.336/2012/4 (ROYAL CANIN SAS v. Mr. Árpád Fekete), the Metropolitan Court of Appeal of Hungary, addressed the issue of a reseller’s entitlement to use a trademark in relation to reselling and commercializing the goods covered by that trademark.
Read more: Correct use of marks by resellers - the "Royal Canin bolt" case