The claimant is owner of notorious international marks CASINO DE MONTE-CARLO, protection of which does not extend to Hungary. He sued a company, operating an electronic casino in Hungary under a similar name. The claimant requested condemnation for trademark infringement and for passing off.

The Metropolitan Court dismissed the claim for trademark infringement holding that notoriety of a mark, non-registered in Hungary is relevant only as ground of refusal of registration, but the notoriety  itself cannot be used as title for an infringement claim. On the other side the defendant was condemned for passing off, i.e. unfair competition. In the latter respect the court held that via Internet the claimant is present on the Hungarian market, reservation of hotel or table of casino can be made via Internet.

The Metropolitan Court of Appeal confirmed the judgment of the court of first instance in respect of trademark infringement, but challenged it relating to passing off. It held that claimants rendered services in Monaco and as a result there is no competition relation between the parties in Hungary.

In the revision procedure the Supreme Court approved the judgment of the court of second instance adding that Sec. 20 (1) of the Act on International Private Law rules on territorial protection, as a result owners of notorious marks can sue a third only if the notorious mark is registered in Hungary. Relating to the claim of unfair competition it was held that for the existence of a competition relation, a foreign company has to be present physically in Hungary, i.e. through a subsidiary. As a result the behaviour displayed abroad has no relevance in Hungary.

(BH 2011/2/39)

Comments

It cannot be contested that the three court forums were right in rejecting the claim on trademark infringement.

Though it is worth mentioning that the wording of Art. 6 bis of the Paris Convention has been exceeded for a long time: mid 20th century the International Chamber of Commerce, AIPPI and others have already initiated the amendment of this provision, namely that notoriety abroad should be not only ground for refusal of protection but it should serve also as title of protection against imitation.

Today, when enforcement became a main interest in the world of intellectual property, this deficiency of Art. 6 bis of the Paris Convention seems to be more manifest than a half century ago.2. Relating to the lack of competition relation between the parties the judgments of the Court of Appeal and the Supreme Court are correct.

Though it cannot be avoided to call into question whether the Hungarian regulation corresponds to the demands of the European Common market.

A. Vida