Facts The international device mark owned by Der Grüne Punkt was registered in classes 1-35, 36, 39, 40, 42.

Cancellation procedure was started for lack of use as the device was used together with other marks, owned by the producer of goods. The Hungarian Intellectual Property Office (HIPO) cancelled the mark (except for some services in class 39, 40 and 42) holding that this kind of use is not in conformity with the rule in Sec. 18 of the TM Act.

The owner of the mark requested review with the Metropolitan Tribunal, which rejected this request. It was said that the attacked mark is not a certification mark with special status insofar it fails to be used in conformity with the general provisions of the TM Act. The Tribunal did not contest that the opinion poll filed by the owner of the mark, attesting that the mark is known in Hungary, is convincing, but as the object of the procedure was use and not the knowledge by the public, the opinion poll was not helpful.

The owner of the mark filed appeal with the Metropolitan Court of Appeal. The latter changed the decision of the HIPO and the Court and rejected the attack and maintained the protection in classes 1, 2, 3, 5, 7, 8, 9, 11, 12, 26, 18, 28, 29, 30, 31, 32, 33 (and in those, where the lower instances maintained it). The Court held that there was a real use of the mark. It is not relevant that the attacked mark was used together with the mark of third parties, the public was able to perceive and know it and by the choice of environmental friendly products the attacked mark was taken into consideration. The Court added that the Tribunal was right holding that reputation alone is not sufficient to prove the use; in the opinion of the Court reputation is relevant in respect of goods in general, though in respect of only such ones for which the attacked mark was really used. (8.Pkf.27.179/2016)

Comments

It is difficult to contest that the attacked device mark, called “green point” is used as a certification mark but it is not registered as such.

However, I believe that the Tribunal was going too far cancelling the mark for non-use, requiring the traditional characteristics of use.

I believe that the Court was right examining from class to class the use of the mark which is reputed not only in Hungary but in several other countries, and rejecting the attack in classes where the mark was de facto used.

At least it is worth mentioning that the Tribunal as well as the Court dealt with the opinion poll: the first one by excluding its relevance, the latter one accepting it. It is not necessary to say that the second approach is more convincing.