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Acquiescence in case of use of a later mark

 

The owner of the device mark SATEL sued the user of the domain name "satel.hu" for trademark infringement.

 

 

The Metropolitan Court rejected the claim holding that the defendant had been using the term "satel" since 1990 as trade name and since 2001 as domain name. As a result of the claimant’s acquiescence with regard to the use of the defendant’s mark and in the terms of Sec. 17 (1) of the Trademark Act the claimant was not entitled to challenge the use of the mark in question.

 

The Metropolitan Court of Appeal changed the judgement of the court of first instance and established that the trademark infringement on the defendant’s behalf exists. It also held that the contested mark should be identical with that of the claimant; similarity does not satisfy the requirement for acquiescence.

 

The Supreme Court annulled the judgement of the Metropolitan Court of Appeal and approved the judgment of the Metropolitan Court. The Supreme Court stated that Sec. 17 (1) of the Trademark Act did not require identity with the prior mark and that Sec. 17 (5) extended this provision to non-registered marks too. Moreover, it pointed out that already from the fact that the claimant had not observed the use of his mark by the defendant for more than 8 years, one could conclude that this fact had not disturbed him. Moreover, it can be expected from the proprietor of the mark to get information continually on eventual illegal use of his mark. The court of first instance was right to conclude that concerning a Hungarian distributor and the proprietor of the mark the latter ought to be aware of the use of his mark by the defendant, which he tolerated for more than 5 years. As a result, the judgment of the court of first instance was not unfounded.

 

Vv 2/2011 p.25

 

Comments

 

Cases relating to acquiescence are not frequent. Moreover, judgments on this topic are even rarer.

 

I observe that Sec. 17 (1) of the Trademark Act rules on "use of a later mark" i.e. on use of a registered one. The mark "satel.hu" was registered only as a domain name, but the provision of Sec. 17 (5) of the Trademark Act on acquiescence applies to non-registered marks too. This provision is in conformity with Art. 9 (2) TM Directive of the EC and in his judgment the Supreme Court analysed the utility of this latter provision i.e. of the analogous Hungarian one.

 

The case is a good example of legal interpretation which can be restrictive or extensive. Without doubt, in this case the last was the suitable one.

 

Dr. Alexander Vida

 

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