Facts Decisions Comment

Facts

The applicant applied for an international trademark comprising a bottle and label. The label featured the words 'Zubrowka' and 'Grasovka', as well as images of a bison and grass. The international mark was registered for beer in Class 32 and alcoholic beverages in Class 33.

A notice of opposition with regard to Class 33 was filed in Hungary by the owner of an earlier mark comprising similar images and identical words, which was registered in the same class. The opponent also lodged an observation with regard to the misleading effects of registering the mark in Class 32, in which his mark was not protected.

Decisions

The Hungarian Intellectual Property Office (HIPO) granted the opposition and observation in respect of both classes. The owner of the applied-for mark filed a request for review with the Metropolitan Tribunal, which was rejected based on the likelihood of confusion.

The owner of the applied-for mark filed an appeal with the Metropolitan Court of Appeal, which partially amended the tribunal's decision. The court approved the refusal of protection in respect of Class 33, but granted protection in respect of Class 32.

After analysing the case, the court held that the tribunal was right in holding that there was a likelihood of confusion in respect of Class 33. However, with regard to Class 32, the court stated that the applicant's request for review had been filed only in respect of the HIPO's refusal to grant protection for the mark in Class 33. Consequently, the court held that the tribunal should not have examined the HIPO's decision relating to Class 32. As such, the tribunal's decision had exceeded the request and was therefore contrary to Section 79 of the Trademark Act and Section 215 of the Act on Civil Procedure (8.Pkf.25.365/2015).

Comment

The tribunal and the court both examined the danger of confusion in respect of the goods in Class 33 accurately. However, the case was published in the World of Trademarks to highlight that the tribunal's decision had exceeded the applicant's claim.(1)

The key takeaway of the case is the application of the longstanding rule of non ultra petita (ie, that a court may not award more than was requested), which is incorporated in the Trademark Act and the Act on Civil Procedure.

Although the material result (ie, the refusal of protection in respect of Class 32) remained unchanged, the court found it useful to highlight the tribunal's procedural mistake.

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email (vida@danubia.hu). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.

Endnotes

(1) This update summarises and provides commentary on a Hungarian Trademark Association report published in Védjegyvilág (World of Trademarks), Vv 2016, 1-2.

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