February 06 2012
The applicant filed an application for the word mark BOSS with the Hungarian Intellectual Property Office in Class 32 for beers and non-alcoholic beverages, including mineral water. An opposition was filed on behalf of the owner of the BASS word and device marks, both of which were already registered for beers. The applicant subsequently restricted the application to non-alcoholic beers.
The Hungarian Intellectual Property Office rejected the application. It held that on the question of likelihood of confusion, the examination should start with a global assessment of the impression conveyed by the mark. Comparing the marks BASS and BOSS and considering the visual and phonetic similarities, it concluded that the mark which was the subject of the later application might be confused with the opponent's marks. In the opponent's device marks, the word was the dominant element. The word mark BOSS was closely comparable to this element: it was also composed of four letters and comprised the same sounds, in identical sequence, with one exception.
In respect of the goods, it was held that beers with a low alcohol content fall within the list of goods classed as 'beers'. Their main function is to satisfy thirst, making them similar to mineral water and other non-alcoholic drinks. Even if a list of goods is limited, it is possible to identify a comprehensive list of goods that will be covered.
The applicant sought a review of the decision, but the Metropolitan Court ruled that the request was unfounded. The court also endorsed the view that a global assessment is decisive, taking into consideration the viewpoint of the average consumer. It stressed that in the mind of the average consumer, identical or similar elements will be more noticeable than differences.
The court held that the Hungarian Intellectual Property Office had been right to conclude that the word element 'Bass' was the dominant element of the opponent's prior device marks; the equilateral triangles that appeared over or around the word element were held to have only a decorative, secondary role. On this basis, the two word elements were examined and the difference of only one letter and one sound was noted. On first glance, the older marks and the application mark differed most in respect of their visual and phonetic elements.
Examining the similarities between the goods, the Metropolitan Court referred to the judgment of the European Court of Justice (ECJ) in Canon (C-39/97), in which the ECJ held that all relevant factors should be taken into account when assessing the similarity of goods or services. Such factors include their nature, their end users, their method of use and whether they are in competition with each other or complementary. The Metropolitan Court held that contrary to the applicant, it found no distinction between consumers of light, low-alcohol beer and consumers of standard-strength beers, noting that most brewers market several kinds of beer. The opponent's list of goods referred to 'beers' in general - a term that included the applicant's light beer. The notion of 'beer' includes non-alcoholic beers, and although there is a difference which connects non-alcoholic beer with other non-alcoholic drinks, this difference is insignificant.
The applicant appealed to the Metropolitan Court of Appeal, which dismissed the appeal. It agreed with the previous findings that the word 'Bass' should be considered determinative and that the device element was secondary in comparison. Moreover, the Metropolitan Court of Appeal shared the first instance court's view on visual and phonetic similarity.
In respect of the comparison of the lists of goods, the Metropolitan Court of Appeal endorsed the first instance court's reference to the ECJ's view in Canon - the relevant facts had been correctly quoted and interpreted in a way that was consistent with the court's practice.(1)
It is worth noting that both the Metropolitan Court and the Metropolitan Court of Appeal referred to the leading ECJ case on the subject, which many would see as no coincidence. Trademark law across EU member states has become closely harmonised and case law is no exception. In the context of EU-wide rules and directives, the application of ECJ judgments should be similarly consistent. In respect of the other point of the dispute - that is, the likelihood of confusion between a word mark and a device mark with a word element - there is such reference in the three decisions in this case. However, the view on the dominance of the word element, as confirmed in all three decisions, corresponds to ECJ case law, as well as court practice in Hungary over several decades.
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