The protection of the IR mark No. 882.978 representing a golden rabbit with a red band around the neck was refused by the Patent Office. It was held that the sitting chocolate rabbit can be attached to Easter, its shape does not differ from the usual ones, it is characteristic for such goods.
The Metropolitan Court rejected the request for review confirming that the shape is characteristic for the goods in question. – Relating to acquired distinctiveness the Court referred to ECJ's CHIEMSEE judgment (C-108/97 and 109/97) in the terms of which " in determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings." (para 49.) " In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking…"(para 51.)"
The Metropolitan Court held that from the documents filed it cannot be concluded that the use of the sign was so intensive, geographically widespread and long-standing, the expenses for publicity were so high that the relevant part of the Hungarian consumers would be able to identify the Easter rabbit as a product of the applicant.
The Metropolitan Court of Appeal dismissed the appeal too, stating that relating to three-dimensional marks the shape is significant, namely whether the latter differs from the usual, enabling the consumer to delimit it safely from identical products of others, and in this way to fulfil the essential role of the mark.
The applicant requested revision, but the Supreme Court dismissed this request stating that the court of second instance was right applying Sec. 2 (2) (b) of the TM Act when it concluded that the applied form is a realistic presentment of the animal, independently from the fact that it can be presented in another way, too. Considering chocolate goods, which can be related to Easter, the form results from the character of the relevant goods.
(Vv. 2011/1)
Comments
- The protection was refused for this IR mark in more than 10 countries.
This IR mark was filed (in 2006) when in Austria the infringement procedure run high, the latter was started by the owner of the analogous prior CTM. Hungarian judges were most probably aware of the passionate discussions in Austria and Germany.
Though it would be exaggerated to believe that the famous process on bad faith application before the Austrian courts and the ECJ (C-529/07) influenced the decision of the Hungarian judges, but it cannot be excluded that the case was appreciated by them with special care, considering the international legal environment. - More generally speaking on three-dimensional marks, it can be reported that since ECJ's PHILIPS judgment (C-299/99) it is rather difficult to obtain protection for such marks: both the Patent Office and the courts are rather rigorous when examining distinctiveness of such marks.
Going one step further it can even be reported that established three-dimensional marks are attacked for cancellation, and their owners can be happy if they are able to find an amicable settlement with the adverse party. A noteworthy exception was the case LEGO bricks (AIPPI Proceedings, Hungary 2010 p.73).
As a result owners of three-dimensional marks became extremely careful enforcing their rights.
A. Vida