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23 September 2019
The applicant filed a combined mark (Figure 1) in Classes 30 (eg, cereal preparations) and 36 (commercialisation of the same).
The application was opposed by the owner of several prior marks, all of which were variations of a leaf design. The opponent stated that:
Further, the opponent stated that its device mark was reputed for cereal products marketed under the IGLO brand. As proof of this reputation, the opponent submitted:
The Hungarian Intellectual Property Office (HIPO) rejected the opposition. It held that the similarities between the applied-for mark and those of the opponent were weak due to the dominant word element of the applied-for mark and the differences in the leaves of the applicant's and the opponent's marks (ie, the device elements). Further, the opponent had failed to prove the reputation of its marks.
The opponent requested a review by the Metropolitan Tribunal, which rejected the request. After examining the visual, phonetic and conceptual features of the marks in question, the tribunal came to the same conclusion as the HIPO – namely, lack of similarity. In respect of repute, the tribunal held that although the opponent's leaf marks were well known in conjunction with the IGLO brand, they were not well known in isolation (1.Pk.23.926/2017).
Likelihood of confusion is a frequent argument in opposition or annulment proceedings and the case law in this respect is rich. Based on such case law, it appears that the word element of a combined mark is generally considered the dominant feature.
This well-established case law may have motivated the opponent in the case at hand to raise the argument of reputation. However, the HIPO and the Metropolitan Tribunal were arguably correct not to accept the reputation of the leaf device element in conjunction with the word mark IGLO.
As demonstrated by this case, proving reputation with marketing and sales figures is difficult. Further, evidence of publicity is seldom sufficient.
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 LLC website can be accessed at www.danubia.hu.
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