Sándor Vida September 5 2022 Supreme Court upholds infringement judgment of lower courts Danubia Patent and Law Office LLC | Intellectual Property - Hungary Sándor Vida Intellectual Property FactsMetropolitan TribunalMetropolitan Court of AppealSupreme CourtCommentFactsThe applicant is the owner of a word mark and two word-and-device marks (Figures 1 and 2) each comprising the term "Használtautó" ("second hand car"), registered in:class 35 for advertisement;class 38 for telecoms services; andclass 41 for entertainment services.Figure 1: first "Használtautó" word-and-device markFigure 2: second "Használtautó" word-and-device markThe applicant is also the owner of an identical domain name ("hasznaltauto.hu"). The defendant is the owner of a similar domain name used for internet advertisement of cars. The applicant sued for trademark infringement and unfair competition.Metropolitan TribunalThe Metropolitan Tribunal said that, through his advertisement, the defendant had infringed the claimant's trademark. Further, the Tribunal said that the suffix "for sale" in the defendant's ads was not sufficient to distinguish from the applicant's mark. Therefore, the domain name used by the defendant could be confused with applicant's mark. As the Tribunal found that the defendant had committed trademark infringement, it did not examine the claim for unfair competition.Metropolitan Court of AppealThe defendant filed an appeal with the Metropolitan Court of Appeal, but this was rejected. The Court approved the grounds stated by the Tribunal and added that the defendant's ads, using the applicant's device mark, also constituted unfair competition. Moreover, the Court said that though the word component of the figurative mark had no inherent distinctive character, in a cancellation procedure against the applicant's mark, it had been established that the mark had acquired distinctiveness through its intensive use.Supreme CourtThe defendant filed an appeal with the Supreme Court, but this was also rejected.(1) The Supreme Court approved the grounds presented by the two lower instances but completed the operative clause of their judgment with the statement that infringement had also committed through the use of the applicant's domain name.CommentIt is interesting that every instance dealing with this case went a step further than the previous instance:The Metropolitan Tribunal found that the defendant had infringed the applicant's device mark.The Metropolitan Court of Appeal stated that the behaviour of the defendant was also unfair.The Supreme Court found that the defendant had also infringed the applicant's domain name.The Supreme Court's decision is also useful as the applicant's device mark is contestable by view of marketing psychology – that is, it was not distinctive in itself, but it had acquired distinctiveness only through use. As the defendant filed for cancellation of applicant's device mark, and this was rejected, all three instances were correct in condemning the defendant.The judgment also shows that, by use, even a simple term like "used car" can be protected by a trademark. In an enforcement case, the status of the trademark cannot be questioned unless the defendant launches a cancellation action against the trademark.For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email ([email protected]). The Danubia Patent & Law Office LLC website can be accessed at www.danubia.hu.Endnotes(1) Supreme Court case No. Pfv.IV.20.700/2018.