Non-registrability of descriptive names

Decisions
Comment

A Hungarian applicant filed the combination word mark ECUMENICAL WORLDMUSIC FESTIVAL in Classes 35, 41, 43 and 45. The mark referred to a religious music event.

Decisions

The Hungarian Intellectual Property Office (HIPO) rejected the application, referring to the European Court of Justice's (ECJ's) Biomild judgment (C-265/00), which held that the combination of several elements which are not distinctive does not result in a distinctive sign. However, a non-distinctive sign can acquire distinctiveness. In this respect, the HIPO referred to the ECJ's Chiemsee judgments (C-108/97 and C109/97), which define the conditions for acquiring distinctiveness, and held that the documents filed by the applicant were insufficient to prove the distinctiveness acquired.

The applicant requested a review by the Metropolitan Tribunal, but this was unsuccessful. The tribunal held that the registration of non-Hungarian words must be refused if their Hungarian meaning is not distinctive. This is the standard approach demonstrated in the case law of the Supreme Court (3. Pk. 23.534/2017).

Comment

The applicant's arguments were twofold:

• The applied-for mark was distinctive, as the Hungarian public would not understand the English world combination. As a result, the mark was distinctive in Hungary.
• If the mark was not distinctive per se, it had acquired distinctiveness through use.

The HIPO examined and rejected both of the applicant's arguments. As the Metropolitan Tribunal examined only the first argument (ie, distinctiveness), it is likely that the applicant filed the request for review only in respect of this argument.

The Metropolitan Tribunal made it easy for itself by referring to Supreme Court case law. Arguably, this case law was correctly applied by the tribunal, since the wording of the mark was English, a language understood by many Hungarians. The same approach may apply for applied-for marks written in German, but is unlikely to apply for marks filed in French, Spanish or Polish.

The second argument (ie, lack of acquired distinctiveness) was examined only by the HIPO, which referred to the following finding of the ECJ:

In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as origination from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (Paragraph 51).

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