The applicant in a recent case filed a coloured device mark featuring the words 'mbook – ablak a világra' (ie, 'window to the world') in Classes 35, 38 and 41.
The owner of the earlier EU word mark Facebook – also registered in Classes 35, 38 and 41 – filed an opposition based on the reputation of its mark, which it claimed was known by more than 2 million users around the world.
The Hungarian Intellectual Property Office (HIPO) granted the opposition and rejected the application. It held that there was a visual similarity between the dominant elements of the two marks – namely, the word 'book'. There was also a phonetic similarity due to the identical number of syllables. Although the supplementary words 'ablak a világra' weakened this similarity, they did not eradicate it. Further, the HIPO held that there was a conceptual similarity between the marks, especially considering the common element 'book'. In addition, the applied-for mark had been filed for identical or similar services.
The applicant requested a review by the Metropolitan Tribunal, which was also unsuccessful, but for different reasons. The tribunal held that the visual, phonetic and conceptual similarities were insufficient grounds to reject the application. However, the blue colour of both marks and the dominance of the word 'book' would lead consumers to conclude that there was a link between the two marks and therefore the two companies. The opponent's use of the Facebook mark for almost identical services would add to this confusion.
The applicant filed an appeal with the Metropolitan Court of Appeal, which was also dismissed. The court held that the visual, phonetic and conceptual similarities were insufficient to establish a likelihood of confusion, but that there was a risk of association, which was strengthened by the blue colour of both marks. This risk of association would exist even if Hungarian consumers did not know the meaning of the English word 'book', which was dominant in both marks. The additional word elements of the applied-for mark were of secondary importance (8. Pkf.25.638/2017).
The applicant requested a review by the Supreme Court, which was unsuccessful for procedural reasons.
It is not uncommon for the three instances to come to the same decision on the merits of a case, but with somewhat different reasoning. In the case at hand, the Metropolitan Court of Appeal's decision that there was a likelihood of confusion by association was arguably the most unique approach.
That said, the three instances coming to the same result is logical, as the Facebook mark is one of the most well known with regard to communication services.
Notably, the Hungarian Supreme Court examines revision requests on a similar basis to many other supreme courts (ie, if the lower instances erred in law or there was a procedural irregularity).
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.
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