Metropolitan Court of Appeal
In 1957 Sándor Benkó created a band called "Benkó Dixiland Band", which became famous not only in Hungary but in several other countries as well. When Benkó passed away in 2015, the band ceased to play but its members continued to collect royalties based on, for example, sales of records and discs.
After unsuccessful negotiations with the members of the former band, Benkó's son (Benkó junior), who was not a member of the band, filed an application for a trademark that was identical to the trade name used for more than 50 years by his father's band.
The members of the band filed two observations and an opposition against the application.
The Hungarian Intellectual Property Office (HIPO) rejected the observations. It held that the application would not mislead consumers and that the observation based on bad faith was not well grounded.
HIPO based its decision on section 5(1)(a) of the Trademark Act in connection with section 2(43) of the Civil Code on the right to bear a name.
Further, it held that the name used for approximately 50 years by the band had become a trade name. In addition, it pointed out that Benkó junior had never been member of the Benkó Dixiland Band. Thus, the members of the band, based on the personality right, could oppose the application. The opposition filed by the members of the band was found to be acceptable and the HIPO refused the application.
The applicant filed a review request with the Metropolitan Tribunal, which was rejected. The tribunal stated that the HIPO had been right in establishing the facts. It added, however, some observations – namely, that an artist's trade name, such as the name "Benkó Dixiland Band", acquired not only personality rights, but also economic value as it constituted an identification of the band.
Benkó junior filed an appeal with the Metropolitan Court of Appeal against the decision of the Metropolitan Tribunal. However, this was also rejected.
The appellate court agreed with the tribunal. Section 5(1) of the Trademark Act prohibits the filing of a mark that is identical to a third party's earlier-protected right, especially the right of an earlier name in conformity with section 2(49) of the Civil Code on the protection of an adapted name (ie, an artistic name).
In this case, as the members of the band and Benko were musicians, the name that they had used was more of an artistic name than a trade name, and such an artistic name would merit protection against a trademark application filed by a person who was not member of the band.(1)
Benkó Dixiland Band was one of the best-known jazz bands in Hungary in the 20th century. They were winners of the jazz festival in Montreux in 1961, they were named "stars of the year" during music week in London in 1976 and they received special recognition from Ronald Reagan in 1987.
The term "dixiland" refers to a style of jazz developed in New Orleans at the beginning of the 20th century. As a result, the distinctive element of the trade name was "Benkó".
From a legal perspective, the case was uncomplicated. This was attested by the consistent decisions of the three instances, which were almost identical.
The decision was perhaps most difficult for the office that had to examine three claims – namely, that:
- the trademark application would mislead consumers (observation);
- the trademark application had been filed in bad faith (observation); and
- the band had vested (priority) rights in the name (opposition).
The second and third instances had to judge only on the third claim.
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