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18 June 2018
The term 'Qlima' was filed as an international mark that extended to Hungary. Protection was requested in Classes 4 (eg, oils) and 11 (eg, refrigerators and air conditioners).
The Hungarian Intellectual Property Office (HIPO) granted the mark protection in Class 4, but refused it in Class 11. In respect of the latter, the HIPO held that the one letter difference between applied-for mark and the Hungarian term "klima", which is also associated with air conditioners, was insufficient to distinguish the two. As such, the mark – in the eye of consumers – was descriptive.
The owner of the mark filed a request for review with the Metropolitan Tribunal, which was successful. The tribunal annulled the HIPO's decision, ordering it to undertake a new examination. The tribunal held that the replacement of the mark's first syllable, 'c' ('k' in Hungarian), created a special term which was not descriptive, but rather was distinctive enough to be protected. It further held that a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods, as held by the EU General Court in Doublemint (T-193/99). Further, the use of the letter 'q' at the beginning of a term is unusual in the Hungarian language. There was also a real possibility that even without the letter 'u', the 'q' would be pronounced by the public as 'qu', as such a term is common in the Hungarian language (3.Pk.20.543/2017).
Following its new examination, the HIPO granted the mark protection in Class 11.
Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms.
However, even if such a term is registered as a mark, it will be exposed to attacks by competitors requesting a declaration of nullity.
Anagrams are similar word constructions, although arguably they are less problematic and thus more reliable than distorted words.
In the present case, the tribunal's opinion was supported by the EU General Court's judgment in Doublemint, which stated that "the term at issue does not enable the public concerned immediately and without further reflection to detect the description of a characteristic of the goods in question" (Paragraph 30).
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (firstname.lastname@example.org). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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