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01 July 2019
The applicant in a recent case filed an application to register the coloured mark DUNATHLON VEDD BE A KANYART in Classes 16, 25 and 41.
The owner of the EU mark DECATHLON, which was registered in all classes of goods, as well as for services in Classes 41 and 42, filed an opposition. In response to this opposition, the applicant withdrew its application in Classes 16 and 25 and restricted it to Class 41 (the organisation of running and bicycle races).
Following the withdrawal of the application in Classes 16 and 25, the Hungarian Intellectual Property Office (HIPO) rejected the opposition and registered the mark in Class 41. In making its decision, the HIPO first examined the level of visual similarity between the marks and found this to be weak, particularly due to the addition of the phrase 'vedd be a kanyart' (ie, 'drive through the bend'). Further, the HIPO found no phonetic similarities between the marks. As regards conceptual similarity, the HIPO held that the English word 'decathlon' has no meaning for the Hungarian public, whereas the 'duna' component of the term 'dunathlon' would immediately evoke the Danube for Hungarian consumers.
As regards the designated services, the HIPO held that the opponent's registration covered numerous services in Class 41 but did not specify the organisation of running and bicycle races.
The HIPO also addressed the opponent's arguments that the mark belonged to a trademark family and was reputed. In this regard, the HIPO held that although it was incontestable that the opponent's trademark family existed, there was no likelihood of confusion. In respect of reputation, the HIPO held that the opponent's mark was reputed for clothes, but not sports races. As a result, it rejected the opponent's reputation argument.
The opponent requested a review by the Metropolitan Tribunal, which was unsuccessful. The tribunal also held that there was no likelihood of confusion between the marks.
The opponent appealed the tribunal's decision, but this was rejected by the Metropolitan Court of Appeal (8 pkf 25.544/2018).
Decathlon, which is active in 45 countries, is one of the biggest sportswear companies in Europe and its mark is undoubtedly reputed. The company's defensive trademark policy is illustrated by the fact that it's EU mark is protected for all goods and services in Classes 1 to 42, including sporting activities.
The applicant was clever enough to restrict the scope of its mark to special services (ie, the organisation of running and bicycle races). As a result, the HIPO, the Metropolitan Tribunal and the Metropolitan Court of Appeal had to limit their examination of a possible conflict to these services.
The decisive factor in determining that there was no danger of a likelihood of confusion was that the initial part of the applicant's mark (ie, 'duna') was evocative of the Danube – one of the largest rivers in Europe. This gave the applied-for mark its distinctiveness. Further, in Hungarian phonetics, the first part of a combined word mark is accentuated.
Thus, although the three decisions in this case contrasted with the rule of enlarged protection of reputed marks, they are nonetheless convincing.
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 website can be accessed at www.danubia.hu.
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