We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
22 January 2018
An application was filed to register the device mark MBOOK (Figure 1) in Classes 25, 35 and 38.
Facebook opposed the application on the grounds of likelihood of confusion and the well-known reputation of its device mark (Figure 2).
The Hungarian Intellectual Property Office (HIPO) rejected the application on the basis of:
The applicant requested a review by the Metropolitan Tribunal, which was unsuccessful. However, the tribunal's grounds for rejecting the application were different from those of the HIPO.
In its comparison of the two marks, the tribunal applied the rule of general impression introduced into EU case law by the European Court of Justice in Sabel v Puma (C-251/95). The tribunal held that the dominant element of both marks was the term 'book' and that the additional elements (ie, colour, typography and design) were irrelevant. This argument was particularly relevant with respect to Classes 35 and 38, in which the opponent's mark is reputed. As regards Class 25, the tribunal agreed with the HIPO's reasoning.
The applicant filed an appeal with the Metropolitan Court of Appeal, which was rejected. The court agreed with the tribunal in all respects (8.Pkf. 25.527/2016).
The result of this opposition is unsurprising. In today's information-driven society, Facebook's existence is ubiquitous. Hence, the applicant did not contest the FACEBOOK mark's reputation.
However, the different reasoning of the HIPO and the tribunal, which resulted in the same decision, is notable. Although correct, the HIPO's reasoning is arguably formulaic, while the tribunal's reasoning seems more accurate, with the latter's reference to ECJ case law giving its decision further weight.
Regardless of how the HIPO and the tribunal arrived at their decisions, this case is a good example of the protection afforded to reputed marks.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email (firstname.lastname@example.org). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.