HIPO has some making up to do: Metropolitan Tribunal orders new examination of cosmetics trademark

Facts

The Hungarian Intellectual Property Office (HIPO) refused a French rights holder's application to extend protection of its international MANHATTAN SUPERSIZE SEDUCTIVE EYES trademark for eye make-up to Hungary.

The HIPO held that the mark referred to the geographic origin of the make-up and consumers believed that it referred to US-quality goods. The applicant filed a request for review with the Metropolitan Tribunal.

The Metropolitan Tribunal annulled the HIPO decision. The tribunal held that, although Manhattan is known as the emblematic centre of the fashion world, it does not produce eye make-up that can be distinguished from eye make-up produced elsewhere. Further, the fact that an applicant's nationality does not conform with the name used in its mark is not, in itself, sufficient grounds to refuse protection if there is no risk of confusion. As a result, the tribunal ordered the HIPO to perform a new examination, in which it granted the mark protection in Hungary (3.Pk.20.004/2015).

Comment

The refusal of applications with geographic elements is a well-established practice in order to prevent the deception of consumers.

The HIPO is, correctly, rather strict in this respect. For example, it refused a Hungarian company's request to file the term OKTOBERFEST – associated with the Munich beer festival – for beer produced in Hungary, which was later upheld by the Metropolitan Tribunal and the Court of Appeal (for further details please see "Sobering ruling for Oktoberfest trademark registrant").

However, as regards eye make-up, which Manhattan is not famous for producing, the HIPO's refusal must have been unconvincing or in need of a more detailed explanation. It is a positive step that the HIPO accepted the tribunal's opinion, as this is not always the case.

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email ([email protected]). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.

ILO - This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.