The owner of the mark MEDOSTORE (Figure 1), which was registered for goods in Classes 3, 5 and 10, filed proceedings against the user of the mark MEDOSAN (Figure 2), which featured similar typography and almost identical colours.
The defendant did not contest the similarity of the mark that it had used with that of the plaintiff. Instead, it proved that it was a licensee of the Swiss-owned MEDOSAN mark, which had been registered in Classes 3, 29 and 30 before the plaintiff's mark was registered.
The Metropolitan Tribunal thus dismissed the plaintiff's claim. First, it stated that the parties had contested neither the defendant's use of the mark nor its similarity with that of the plaintiff. In this respect, the tribunal held that European Court of Justice (ECJ) case law(1) holds as follows: "the provisions of the [EU Trademark] Regulation must be interpreted in the light of the priority principle"(2) and "in the event of a conflict between two marks, the mark registered first is presumed to have met the conditions required to obtain Community protection before the mark registered second".(3) As the ECJ had not addressed the legal position of a licensee, Hungarian case law applied in this regard. As such, the tribunal held that the licensee of a prior mark will not constitute an infringer of a later mark.
The plaintiff filed an appeal with the Metropolitan Court of Appeal, which was dismissed. The court stated that the tribunal was right in its establishment of the facts and application of the case law. The tribunal was also right to disregard the differences between the licensor's mark and the mark used by the defendant, as these were insignificant with regard to distinctiveness.(4)
The above judgments are unsurprising and the judges in most EU member states would likely have come to the same conclusion. The fact that the tribunal looked for instruction from ECJ case law can be seen as a sign of loyalty. However, the tribunal was still able to arrive at a convincing decision without finding a precedent in Hungarian case law.
Surprisingly, the plaintiff – which seems to have employed an intensive marketing campaign and achieved impressive publicity – not only continued the litigation after recognising that the defendant was a licensee of the proprietor of a prior mark, but also filed an appeal. A technical lesson for the public from this case is that it is useful to send a warning letter before starting litigation.
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.
Endnotes
(4) (8.Pf.321/216), Védjegyvilág 2017, 1-2.
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