Hungarian Intellectual Property Office
A party (the applicant) requested the cancellation of the Hungarian part of international mark No. 589.425, ORIGINAL GROSSER SCHWEDEN BITTER, which was registered on 24 July 1992 in classes 5 and 33 (the attacked mark).
The applicant claimed that his own marks – MAURERS SCHWEDEN BITTER and ABTEI SCHWEDEN BITTER – while not registered, had been used in Hungary since 1991, before the attacked mark was filed. Moreover, the applicant said that the attacked mark had been filed in bad faith.
Hungarian Intellectual Property Office
The Hungarian Intellectual Property Office cancelled the Hungarian part of the attacked mark. It was held that the attacked mark was confusingly similar to the MAURERS SCHWEDEN BITTER mark. The latter had been used since 1990 for similar goods. However, the bad faith of the owner of the attacked mark was not proven.
The owner of the attacked mark requested a review with the Metropolitan Tribunal, but the appeal request was refused. The Tribunal stated that the applicant had used the signs MAURERS SCHWEDEN BITTER and ABTEI SCHWEDEN BITTER on the Hungarian market before the filing of the attacked mark. In the attacked mark, the term "original" modified only slightly the known term "Schweden bitter", which was the dominant element of the conflicting marks.
Moreover, the applicant's MAURERS SCHWEDEN BITTER mark also signified the generally used name of the product. The term was graphically and specifically elaborated and, as such, captured the attention of potential customers. Further, the words "MAURERS Schweden bitter" were presented in characteristic letters that were similar to those of the attacked mark. As a result, it was possible that customers could use the term "Schweden bitter" to identify the goods. The dominant elements of the conflicting marks were identical, so confusion could not be excluded.
The same reasoning was valid in respect of the device elements of the conflicting marks.
The term "Schweden bitter" was represented in a similar font and the same style. It was not relevant that similar third-party signs had been on the market before the priority date. The potential for confusion was not excluded by the fact that the applicant had used his mark on the market before the priority date of the attacked mark.
The owner of the attacked mark filed an appeal with the Supreme Court,(1) but this was also rejected. The Court said that when the confusion of two marks is to be examined, where there are such dominant elements that assure confusion between the marks, the likelihood of confusion cannot be excluded.
The Court further held that the owner of the attacked mark was incorrect to say that, in respect of a mark comprising a word and a device, the device element is also decisive. On the contrary, the Court said that when comparing the combined conflicting marks, the dominant element was "Schweden bitter". The term "Schweden bitter" in the attacked sign was also presented in similar characters to the term in the applicant's marks, so it could not be considered to be distinctive.
The Court stated that the Tribunal had been right to hold that the term "original" in the attacked mark modified only slightly the meaning of the term "Schweden bitter", and that a consumer would consider that the dominant element was "Schweden bitter". The Court said that there was a likelihood of confusion and the attacked mark ought to be cancelled.(2)
The question of likelihood of confusion is often the challenging part of litigation regarding cancellation or infringement of trademarks. The dominant element doctrine is often helpful, but not always.
In this case, the marks to be examined and compared comprised word and device elements. The three instances held that the word element "Schweden bitter" was dominant and distinctive. However, they also had to examine the device elements, which, in conformity with case law, have a secondary importance compared with the word element.
In this respect, the conclusion was convincing. It can be understood that only a very characteristic device element could assure the distinctiveness of a mark.
Though all instances were aware that the dominant element of the marks was the words "Schweden bitter", which was the name of the product, they did not consider this fact as non-distinctive, probably because the term "Schweden bitter" was not, at the time, a product name attributable to either of the parties or generally known by the public. This property was not proven by the applicant.
It can be argued that this behaviour of the three instances – namely, not dealing with the well-known character of the name "Schweden bitter", which had not been proven – could not be contested. Such a procedural solution conforms with the concept that the judge has no right to go beyond the claim.
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(1) This case took place when the Trademark Act 1997. As the system of jurisdiction was reformed in 2003, the appeal in similar cases nowadays would be judged by the Metropolitan Court of Appeal and not by the Supreme Court.