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Genuine use of a mark

* 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