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Trademark Protection for Specific form of Chocolate

* 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 device mark No. 944 650 has been protected in Hungary since 2008. It contains 6-6 chocolate cubes, without edges, on the surface of each cube engraved stars (compass rose stars).

 

In 2013 a competitor requested cancellation, stating that the device consists exclusively of the shape of the product that results from the nature of the product.

The owner of the attacked mark entrusted Danubia with the defence. In a Statement it was rendered probable that the product called “Schogetten” is rather well-known in Hungary and the form acquired secondary meaning.

The Hungarian Intellectual Property Office rejected the cancellation request. Though it did not accept the proof on genuine use, holding that if the mark was excluded from protection at the date of application, this cannot be cured by use, but it held that the mark was sufficiently distinctive to be protected and the applicant was not able to prove the contrary.

The cancellation applicant filed request for review with the Metropolitan Tribunal.

This request was also rejected by the Tribunal.The latter examined also whether the attacked mark consists exclusively of the shape which result from the nature of the goods themselves or which is necessary to obtain a technical result.

In this respect the Tribunal stated that “it can be established that the subject trademark is indisputably the figure of a chocolate product, thus, its nature and the technical result to be obtained by it lie in the fact whether it is consumable. The shape of the chocolate cubes with smooth surface, without edges and being dome shaped performs this function in itself ensuring that it can be easily taken into the mouth even by children. Further, the cubes placed side by side corresponding to the layout of the trademark makes it unnecessary to split the blocks or bars being the commonly used form of chocolate product, by breaking or cutting, which is a favourable solution in hygienic or aesthetic respect. Hence these are the functions performed by the dome-shaped form of chocolate units which correspond to the disputed trademark.”.

(3.Pk.23.764/2014)

Comments

Both the Office and the Tribunal referred ex officio to the Philips/Remington judgement (C-299/99) of the EU Court of Justice, though the applicant did not quote it. Both came to the conclusion that the test explained in this does not apply to the case.

Though the Tribunal has not dealt with the motivation of the cancellation applicant, it is worthwhile mentioning that it was obvious that he requested cancellation for acquiring the Hungarian market (where he is also strongly present) for an almost identical product. In Germany he was namely condemned by the courts of first and second instance (OLG Köln) for infringing the mark the cancellation of which he requested in Hungary.

Dr. A. Vida