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Conflict of Beer Brands

The applicant filed a trademark application for the registration of the word mark BOSS with the Hungarian Intellectual Property Office in class 32 for beer, mineral water and other non-alcoholic beverages. Against this application, DANUBIA Patent & Law Office filed an opposition on behalf of the owner of the marks BASS (both word and device marks) registered for beer.

 The applicant restricted his application to "non-alcoholic beers".

The Hungarian Intellectual Property Office refused the registration. In its opinion, while assessing likelihood of confusion one has to start from the global assessment. Comparing the marks BASS and BOSS and considering visual and phonetic similarities, the Office concluded that the latter application could be confused with the marks of the opponent. In the device marks of the opponent the word element should be considered as dominant, regarding that this is composed also from four letters and the same sounds, in identical sequence, with exception of one, which is in both case the second letter.

With respect to the goods, the Office held that the beers indicated in the list of goods including beer with low alcohol content has the same function, namely the sate of thirst. This approximates beer to mineral water and other non-alcoholic drinks. Therefore, even after the restriction of the list of goods a full identity of goods can be stated.

The applicant filed a request for review against the decision of the Office.

The Metropolitan Court held that this request was not well-founded. The Metropolitan Court also stated that the global assessment of the mark should be decisive, taking average consumers into consideration. The Court emphasized that in the mind of an average consumer, the identical and correspondent elements would rather remain than the differences.

The Metropolitan Court held that the Office was right in concluding that the dominant element of the prior device marks of the opponent is the word element BASS, as the equilateral triangles figuring over or around the word element have only an ornamental, secondary role. As a result of this, only the two word elements were examined, and between those the difference was one letter, one sound. At first glance it can be stated accordingly that the older marks and the applied one show significant similarities in respect of visual and phonetic aspect.

Examining the similarity of goods, the Court referred to the judgment of the European Court of Justice rendered in the case C-39/97 Canon in which the latter has pointed out that while assessing the similarity of the goods or services concerned, all relevant factors should be taken into account. Those factors include their nature, their end users and their method of use, and whether they are in competition with each other or are complementary. The Metropolitan Court held that - in contrary to the applicant -, a separation of consumers consuming light beer or porter cannot be noticed. Most of the brewers put several kinds of beer (light, porter, non-alcoholic, flavoured with fruit) on the market. The opponent's list of goods contains beers in general, i.e. the applicant's light beer too. The notion of beer includes non-alcoholic beer too, and though a difference from other non-alcoholic drinks exists in this case, this difference is insignificant.

The Metropolitan Court of Appeal dismissed the appeal of the applicant.

The Metropolitan Court of Appeal agreed with the Office and the Court of first instance in respect that the term (the word element) BASS ought to be considered as determinative compared to which the device element had secondary importance. Moreover, the Metropolitan Court of Appeal shared the view of the Court of first instance on the visual and phonetic similarity too. The Metropolitan Court of Appeal agreed with the Court of first instance with regard to the collation of the dominant elements.

Relating to the comparison of the list of goods it was held that the Court of first instance was right to refer to the viewpoint of the European Court of Justice as explained in the Canon case, the relevant facts listed in the latter were correctly quoted and appreciated in conformity with court's practice (8.Pkf.26.005/2011).

Observations: It cannot be considered as accidental that in respect of the similarity of goods both the Metropolitan Court and the Metropolitan Court of Appeal referred to the leading case judged by the European Court of Justice. The Trademark law of the EU's Member States is harmonised, including case law. As for this reason, rules are directives in the EU are EU conform, the application of judgements of the European Court of Justice ought to be EU conform too.

With regard to the other point of the legal dispute, namely the likelihood of confusion of a device mark with word element and a word mark, such reference cannot be read in the three decisions referred hereby. Moreover, the statement of the dominancy of the word element, as established by all three instances corresponds to the case law of the European Court of Justice and to the Hungarian one as practised for several decades.

Dr. Alexander Vida

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