An applicant filed to register the mark CIMIFEMINE for all goods and products in Class 5.
The owner of the internationally registered marks REMIFEMIN and REMIFEMIN PLUS filed an opposition, claiming likelihood of confusion with its prior marks, which were registered for pharmaceuticals.
The Hungarian Intellectual Property Office (HIPO) dismissed the opposition, holding that:
- there were minimal visual similarities between the marks;
- there were even less phonetic similarities; and
- there were no conceptual similarities.
The opponent filed a request for review with the Metropolitan Tribunal, which was rejected. The tribunal approved the HIPO's grounds for dismissal and held that the common element of both marks was the word 'femin', which is likely to be known by only a minor part of the average consumer group. Further, the first syllables of the prior and applied-for marks were different. In addition, according to Hungarian phonetics, the first syllable of each word was accentuated. As a result, there was no likelihood that the public would be confused when they saw the applied-for mark.
The opponent filed an appeal with the Metropolitan Court of Appeal, which was successful. The court held that as neither the applied-for mark nor the prior mark were Hungarian terms, they should be considered invented. Therefore, the rules of Hungarian accentuation were problematic in this respect, with the difference of the accentuated first syllable being insufficient to exclude a likelihood of confusion. Further, the court held that the difference of one syllable in an invented word comprising five syllables does not exclude a likelihood of confusion. Finally, the court held that an assessment of a likelihood of confusion is more sensitive for conflicting pharmaceutical marks than for marks designating other goods (8.Pkf.26.060/2016).
The HIPO and Metropolitan Tribunal decisions are in line with Hungarian case law (ie, a lack of or little similarity between marks excludes a likelihood of confusion), but the Metropolitan Court of Appeal's decision is somewhat surprising. Although the court's decision is also well grounded in Hungarian case law, it has been disputed for a number of reasons.
First, the prior mark was used only for pharmaceuticals, while the list of designated goods for the applied-for mark included insecticides and pesticides. As the relevant public for insecticides and pesticides is different to that for pharmaceuticals, it was arguably unnecessary to refuse protection of the mark for these goods.
Another issue is the increased protection that the court afforded to pharmaceutical marks (ie, the more rigorous test in respect of likelihood of confusion). It is true that such case law is established in Hungary and, as such, this argument is not new. However, in respect of the EU Trademark Directive (89/104/EEC) and European Court of Justice (ECJ) case law concerning the refusal of a special category of marks in a registrability test (Philips, C-299/99) – which tends not to differentiate between different goods in respect of registrability – it is questionable whether Hungarian case law is in line with that of the European Union. Although the ECJ's decision in Philips was rendered in respect of the registrability of three-dimensional marks, its discussion of uniform appreciation is arguably applicable to all marks.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email ([email protected]). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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