The applicant in a recent case requested the cancellation of the mark MINIME, which was registered in Class 20 (eg, model figures), Class 28 (eg, scale model figures and modelled plastic figurines) and Class 40 (eg, printing and printing services).
The applicant argued that the term 'mini me' was well known with regard to 3D printing services. For example, back in 2014 the applicant had signed a cooperation agreement with the owner of the MINIME mark regarding the sale of a miniature figurine of himself in a charity auction. Within the framework of this sale, the owner of the mark had prepared a scan of the statue.
The Hungarian Intellectual Property Office (HIPO) granted the cancellation request, stating that the term 'mini me' had been widely used on the 3D printing market before the mark's filing date, as proved by documents filed by the applicant.
The owner of the mark requested a review by the Metropolitan Tribunal, which was unsuccessful. The owner of the mark argued that the term 'mini me' had been used by others for only a short time before the mark's filing date. However, the tribunal held that even a short period of prior use can be sufficient. Further, in this case, the object of use was 3D scanning and printing, which is a new technology. As a result, the short period of prior use of the term justified the mark's cancellation.
The owner of the mark filed an appeal with the Metropolitan Court of Appeal, which was rejected. The court stated that the tribunal had been correct in stating the facts and the legal consequences of the case – namely, that the term 'mini me' had generally been used by competitors on the relevant market before the mark's filing date, which had been duly proved by the applicant (8.Pkf.25.114/2018).
The technique of preparing small statues using 3D scanning and printing technology is a recent innovation. Owing to the considerable cost and the relatively small number of consumers associated with this type of technology, this case was exceptional.
It is not a coincidence that the HIPO's cancellation decision was approved by the Metropolitan Tribunal and the Metropolitan Court of Appeal. As such, the tribunal was convinving in holding that in such special circumstances, even a relatively short period of use of a term by third parties can be sufficient for the term to become known by the relevant public.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.
