The international device mark PASTA ZARA (Figure 1) was registered in Class 30 for pasta. The rights holder was the legal successor of the original owner
The rights holder of a similar mark used for clothes requested revocation of the PASTA ZARA mark on the grounds of non-use. The PASTA ZARA rights holder provided invoices, brochures and packages as evidence of extensive use. However, as the transfer date of the mark was later than the date of the invoices, the Hungarian Intellectual Property Office (HIPO) rejected the documents as proof and revoked the mark.
The PASTA ZARA rights holder filed for review before the Metropolitan Tribunal. The rights holder proved that he had acted as the prior owner's licensee in the critical period (ie, before the mark was transferred) and, as a result, the revocation was annulled.
The petitioner filed an appeal of the tribunal's decision, which was dismissed by the Metropolitan Court of Appeal. The court held that the tribunal's opinion was correct, adding that even if the PASTA ZARA rights holder had been unable to file a written licence agreement as proof, his legal relationship with the prior owner would still have been valid as Section 23 of the Trademark Act does not require licence agreements to be in writing. In light of this, the HIPO should have accepted that the relationship had existed (8.Pkf.26.340/2014).
Under the 'failure to use' rule contained in Sections 18 and 72 of the Trademark Act, any party can request the revocation of a mark that is not in use, although such requests are usually filed by competitors. In this case, the petitioner's mark was used for clothes, whereas the disputed mark was used for pasta. Nonetheless, the petitioner was resolute – even when he learned through the tribunal's decision that the mark was used extensively by an authorised company.
While the HIPO decision was correct in respect of the formal requirements of procedural law, it was incorrect in respect of the merits of the case. However, the Metropolitan Tribunal and the Metropolitan Court of Appeal both examined the merits of the case – in particular, the idea that oral contracts conform with the general principles of contractual law. In 2015 the European Court of Justice went a step further in Hassan (C-163/15), ruling that licensees can sue infringers even if the licence has not been entered in the Patent Register.
