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28 March 2016
The international trademark MP MILIPOL was registered in Hungary in Classes 35 and 41 for the organisation of trade fairs and exhibitions (particularly for police, civil and military equipment) and in Class 42 for hotel services (see Figure 1 below).
The claimant sought revocation for non-use of the Hungarian part of the mark. The Hungarian Intellectual Property Office (HIPO) complied with the request and revoked the registration, finding that the evidence of use filed by the trademark owner related to the organisation of exhibitions in France and Qatar, which could not be accepted as use in Hungary. The owner of the revoked mark appealed.
The Metropolitan Tribunal partially overturned the revocation decision, upholding protection in Classes 35 and 41, but approving revocation in Class 42. The tribunal held that the number of market participants in Hungary for the service in question (police, civil and military equipment) was modest. These market players spoke other languages in addition to Hungarian and sufficient evidence was submitted that several had attended international exhibitions in Paris since 2003. Moreover, information on the services provided by the trademark owner could easily be obtained online – including at its homepage 'milipol.com.domain', which was regularly updated. In addition, it was proved that certain Hungarian companies had even attended these exhibitions as exhibitors. The applicant for revocation appealed the Metropolitan Tribunal's decision.
The Metropolitan Court of Appeal allowed the appeal and ultimately revoked the mark in Classes 35 and 41. It held that as the trademark owner's homepage could be accessed from anywhere in the world, it could not be considered an active participant in the Hungarian market. According to the court, the documents submitted also did not support the contention that the trademark owner had played an active role in the Hungarian market; the trademark owner had to prove that it offered services directly to Hungarian consumers. The trademark owner filed a request for revision.
The Supreme Court confirmed that an enterprise's online presence is insufficient to prove use in any given country; otherwise, the rule of required use would be rendered worthless (Pfv IV.21.182/2014).
This case was hotly contested, at least in respect of the classes concerned: the HIPO did not establish genuine use, while the Metropolitan Tribunal partially overturned this finding and the Metropolitan Court of Appeal went even farther in its rejection of the first-instance decision.
A decisive factor in the case was the online use of the mark. This is a relatively new aspect of trademark law and it appears that the European Court of Justice (ECJ) has addressed the issue only in its Google decision (C-236-238/08), from which it can be concluded that a mark may be infringed by third-party online use. If infringement can be established through online use, the question arises: Why can use not be established in the same way? It seems that the Hungarian courts would have been more prudent to refer the case to the ECJ before rendering a final decision.
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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