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Acquiescensce claimed based on a slightly different sign - SATEL

The plaintiff is the Polish owner of the international device mark SATEL registered in 2001. He sued the defendant in 2008, whose predecessor let the domain name “satel.hu” registered in 2001 and since 2000 he in commerical contact with the exclusive agent in Hungary of the plaintiff in Hungary. Both parties offered products for safety technique.

 

The plaintiff sued the defendant for infringement.

The Court of first instance rejected the claim stating that the predecessor of the defendant had used the term SATEL as trade name starting from the 90’s, moreover as domain name from 2001. As a result, he acquiesed to these uses.

The Court of Appeal altered the judgement of the court of first instance and held that as the domain name used by the plaintiff was only similar, but not identical with the colored device mark of the plaintiff, acquiescence could not be accepted.

The defendant required revision and the Supreme Court ordered it. He stated that considering the term “previously used” (Sec. 5(2) of the Trademark Act) in connection with Sec. 17(5) on acquiescence it ccould not be concluded that a total identity must have existed between the mark of the parties. The same is valid relating to infringement procedures, neither Sec. 12(2) of the Trademark Act requires total identity in respect of the infringing mark. There would be no equity if the acquiescence was excluded, and in a similar situation condemnation for infringement would be possible.

Moreover, it was held that alone from the fact that during a period of 8 years the plaintiff had not noticed that the defendant had used his mark, the conclusion was well-founded that this use had not been embarassing for him. It could be expected from him that he informed himself continuously on eventual infringing use of his mark and to defend it in a reasonable term. Considering this situation, the Court of first instance concluded properly that regarding the exlusive agent in Hungary of the plaintiff, who were in contact with the defendant, he ought to have been aware of the use of his mark by the defendant.

As a result, the Supreme Court approved the judgement of the Court of first instance.

(BH 2012/No. 67).

                                                                                                                Dr. A. Vida


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