There have been relatively few 'free-riding' trademark cases in Hungary since the country's laws were harmonised with EU law in 1997. However, in a case involving the unfair use of the LOUIS VUITTON mark, the courts' decisions correspond to, and provide a helpful reminder of, the European Court of Justice's test for determining whether a party has taken unfair advantage of a mark's reputation.
The Hungarian Intellectual Property Office recently rejected a trademark application on the grounds of bad faith, finding that the applicant had attempted to register the mark so that he could charge a licence fee when a swimming arena with the same name commenced operations. As bad-faith decisions are rare in trademark cases, this decision would also be relevant in piracy cases.
Likelihood of confusion is a frequent argument in opposition or annulment proceedings and the case law in this respect is rich. This well-established case law may have motivated the opponent in a recent case to raise the argument of reputation. However, as demonstrated by this case, proving reputation with marketing and sales figures is difficult. Further, evidence of publicity is seldom sufficient.
The Hungarian Intellectual Property Office recently granted the cancellation of the mark MINIME on the basis that the term 'mini me' had been widely used with regard to 3D printing services before the mark's filing date. Although the owner of the mark argued that the term had been used by others for only a short time before the mark's filing date, in 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.
The Hungarian Intellectual Property Office (HIPO) recently refused to register a mark on the basis that the opponent had proved its prior mark's reputation in a substantial part of the European Union. The applicant requested a review by the Metropolitan Tribunal, contesting the significance of the HIPO's decision for Hungary if reputation could be proved only in other EU member states. As the tribunal had doubts in this regard, it referred the case to the European Court of Justice for the first time.
Decathlon – one of the biggest sportswear companies in Europe – has a defensive trademark policy under which its reputed EU trademark is protected for all goods and services in Classes 1 to 42, including sporting activities, as well as services in Classes 41 and 42. However, the applicant in a recent case was clever enough to limit the scope of its application to register the coloured mark DUNATHLON VEDD BE A KANYART to special services, thereby limiting the authorities' examination of a potential conflict.
An applicant filed to register the combination word mark R.E.D. RÓNA ENERGY DRINK, which was opposed by the owner of the RED BULL mark. The applicant argued that there was no likelihood of confusion, as the term 'Róna' (ie, plain) was the distinctive element of the applied-for mark. However, the Metropolitan Tribunal disagreed, finding that the central element of the applied-for mark was the acronym 'R.E.D.'.
Colour combinations could be protected as trademarks under the previous Trademark Act 1969. However, single colours have only been protectable as trademarks since Hungary joined the European Union and harmonised its trademark law therewith. A recent Metropolitan Court of Appeal case concerning a colour mark for a shade of violet, which was used on chocolate packaging, is a notable example of the application of the rules on colour marks during the enforcement phase.
In a recent dispute between the inventor and marketer of a food supplement gel, the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal had to determine the true owner of the associated word and device marks. Using EU case law as a guide, they considered the market situation, including the knowledge of consumers, and applied the principle of registration and the rule of good faith.
In a recent trademark dispute between Facebook and the owner of the applied-for mark 'mbook – ablak a világra' (ie, 'window to the world'), the Hungarian Intellectual Property Office, the Metropolitan Tribunal and the Metropolitan Court of Appeal came to the same decision on the merits and rejected the applied-for mark, albeit for different reasons. This result is logical, as the Facebook mark is one of the most well known with regard to communication services.
The Office of Economic Competition recently fined the owner of the REXONA mark HUF30 million following an investigation into an ad which compared Rexona Invisible and NIVEA Invisible antiperspirant. The case demonstrates the important role that trademarks play in comparative advertising, as the decision discussed the REXONA and NIVEA marks which appeared in the TV ads and the fine – which is arguably high – was the result of the volume of products sold under the REXONA mark.
In a recent case, the Hungarian Intellectual Property Office (HIPO) held that the services covered by two conflicting marks were not similar and granted the applied-for mark protection in Class 35. In this regard, the HIPO took a traditional approach, bearing in mind the marks' classification and examining only the services in Class 35, which were different. However, on review, the Metropolitan Tribunal took a different approach.
The Hungarian Intellectual Property Office recently refused to grant the word mark PAYSEND protection, holding that it is descriptive. However, the Metropolitan Tribunal disagreed, holding that the mark is a grammatically incorrect variation which does not in itself enable consumers to recognise the service which it designates. Rather, the mark comprises an invented word, which makes it distinctive.
An application was filed to register the term #lovetokaj for goods and services. The Hungarian Intellectual Property Office (HIPO) refused to register the sign for goods, holding that the geographic name Tokaj, which is reputed and therefore cannot be registered as a trademark for wines, cannot be used for other products either. However, the Metropolitan Tribunal disagreed and ordered the HIPO to repeat its examination procedure.
Trademark owners often allege infringement of both the Trademark Act and the Act on the Prohibition of Unfair Market Behaviour in enforcement proceedings. However, the application of competition law in registration (ie, opposition) proceedings, as demonstrated in a recent case, is new to Hungarian case law. The legal basis for this case law is Section 5(2)(a) of the Trademark Act, which allows the Metropolitan Tribunal to link claims to other laws, including competition law.
The applicant in a recent case filed an application to register a device mark which featured the name 'Stowasser.J'. Two parties filed observations against the mark and the Association of Manufacturers of Music Instruments filed an opposition. However, the Metropolitan Tribunal held that as the observers were not named Stowasser, they could not contest the applicant's use of the name. The case also addressed the infringement of a deceased person's name where this will damage their reputation.
In a recent decision, the Hungarian Intellectual Property Office examined only one part of the opponent's claims before rejecting them in their entirety. As such, its decision was incomplete in respect of the claims relating to unfair market behaviour, even though the parties were genuine competitors. However, the Metropolitan Tribunal remedied this error by basing its decision on Section 5(2)(a) of the Trademark Act, which relates to other branches of law, including competition law.
Although unable to find a precedent in Hungarian case law, the Metropolitan Tribunal was still able to arrive at a convincing decision in a recent case involving a licensee's use of a mark which had been registered before the plaintiff's similar mark. Surprisingly, the plaintiff not only continued the litigation after recognising that the defendant was a licensee of the proprietor of a prior mark, but also filed an appeal.
Brand owners often distort descriptive terms or generic names in order to register them as trademarks. Whether they succeed depends on the level of difference between the two terms. A recent Metropolitan Tribunal opinion in this regard was supported by the EU General Court's judgment in Doublemint, according to which a word's descriptive character must be material in respect of the relevant goods and enable the public to immediately recognise the characteristics of such goods.
Case law clearly demonstrates that opponents in opposition and cancellation procedures must often prove the genuine use of their mark. However, whether online publicity constitutes acceptable proof of use has been the subject of debate. In a recent case, the Metropolitan Tribunal expressly recognised the role of the Internet in commerce and imposed a higher standard of use – namely, evidence of realised sales – as proof of genuine use.