Facts
Decision
Comment



Facts

Device Mark 944650 has been protected in Hungary since 2008. It comprises chocolate cubes with no edges and engraved compass rose stars on each cube.

In 2013 a competitor requested cancellation of the mark, stating that the device consisted exclusively of the shape of the product, which resulted from its nature. In its statement it was rendered probable that a product called Schogetten was relatively wellknown in Hungary and that the shape had acquired secondary meaning.

Decision

The Intellectual Property Office rejected the cancellation request. Although it did not accept the proof of genuine use – holding that if the mark were excluded from protection at the date of application, this issue could not be resolved by use – it held that the mark was sufficiently distinctive to be protected and that the applicant was unable to prove the contrary.

The Metropolitan Tribunal rejected the competitor's subsequent request for review. The tribunal examined whether the mark in question consisted exclusively of a shape which resulted from the nature of the goods or which was necessary to obtain a technical result.

The tribunal stated that:

"it can be established that the subject trademark is indisputably the figure of a chocolate product, thus, its nature and the technical result to be obtained by it lie in the fact of whether it is consumable. The shape of the chocolate cubes with a smooth surface, no edges and a domed shape performs this function in itself ensuring that it can be easily placed into the mouth, even by children. Further, the cubes placed side by side, corresponding to the layout of the trademark, make it unnecessary to split the blocks or bars as is commonly done with chocolate products by breaking or cutting, which is a favourable solution in hygienic and aesthetic terms. Hence, these are the functions performed by the dome-shaped form of the chocolate units which correspond to the disputed trademark."

Comment

The office and the tribunal referred ex officio to the European Court of Justice judgment in Philips v Remington (C-299/99) – although the competitor did not quote this decision – and concluded that the test outlined therein did not apply to the case at hand.

Although the tribunal did not address the competitor's motivation, it was obvious that it had requested the cancellation in order to secure the Hungarian market (in which the owner of the mark had a significant presence) for an almost identical product. In Germany, the competitor had been condemned by the courts of first and second instance for infringing the mark for which cancellation was requested in Hungary.

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.