January 08 2018
The international trademark RENO had featured on a building for approximately 20 years. The owner of the building named the building Reno Udvar (ie, Courtyard Reno).
When the trademark owner moved out of the building, the building owner registered the device mark RENO UDVAR (Figure 1) in Class 36 (real estate services) through an accelerated procedure. This was despite the fact that:
The Hungarian Intellectual Property Office cancelled the RENO UDVAR mark on the grounds of bad faith (Section 3(1)(c) of the Trademark Act), holding that it was detrimental to a reputed mark (Section 4(1)(c) of the Trademark Act).
The building owner filed a request for review with the Metropolitan Tribunal, which was successful. The tribunal annulled the cancellation, holding that the owner of the RENO mark had accepted that the building had been named Reno Udvar for approximately 20 years. Further, as the building owner's use of the RENO UDVAR mark aligned with his commercial activity, bad faith did not apply.
In respect of the RENO mark's reputation, the tribunal held that no injury of the mark had occurred, as the parties' operated in different commercial fields. Further, the building owner had due cause to use the RENO UDVAR mark.
The owner of the RENO mark filed an appeal with the Metropolitan Court of Appeal, which was successful. In respect of bad faith, the court held that although the building owner had used the dominant element of the RENO UDVAR mark with the consent of the owner of the RENO mark for approximately 20 years, this consent had been revoked. Further, the RENO UDVAR mark had been filed after this revocation through an accelerated procedure and had thus been filed in bad faith.
As regards the injury to reputation, the court held that the likelihood of confusion alone was sufficient to establish this injury.
Further, as regards due cause, the court held that where an application has been filed after receipt of a warning letter, no reference to due cause can be made (8.Pkf.25.188/2015).
As it is usually difficult to prove the existence of bad faith in respect of trademarks, case law is often reluctant to apply this prohibition. This was the case with the tribunal's decision. Fortunately, the Metropolitan Court of Appeal was more flexible in this respect and interpreted the facts concerning bad faith alongside another issue, thus leading to different interpretations of the concept of due cause by the tribunal and the court. The court's interpretation of this concept corresponds with the European Court of Justice's interpretation in Red Bull (C-65/12, para 45).
Surprisingly, neither the tribunal nor the court addressed the question of exhaustion, although this may be because the building owner's legal representative did not refer to it.
The court's decision was influenced by the fact that the RENO mark was reputed. In a case involving non-reputed marks, the outcome would likely be different.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email (firstname.lastname@example.org). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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