Sándor Vida January 23 2023 Trademark infringement row heating up: how similar are chilli and paprika? Danubia Patent and Law Office LLC | Intellectual Property - Hungary Sándor Vida Intellectual Property FactsMetropolitan TribunalMetropolitan Court of AppealSupreme CourtCommentFactsThe plaintiff is the owner of the word mark TV PAPRIKA, registered for services relating to television entertainment and the production of television shows. The defendant used the sign CHILITV and the domain name "chili.tv" in a television ad for gastronomic services. The plaintiff sued the defendant for trademark infringement.Metropolitan TribunalThe Metropolitan Tribunal decided against the defendant, finding that its use of the mark in advertising and as a domain name infringed the plaintiff's trademark. The Tribunal held that while there were visual and phonetical differences between the marks, there was a clear conceptual similarity. The average consumer, therefore, could confuse the two signs. The Tribunal's decision was supported by an opinion poll filed by the plaintiff. Given that both parties had used the sign for television services, the likelihood of confusion by consumers, even at first glance, could not be excluded. Moreover, the reputation of plaintiff's mark had been proved.Metropolitan Court of AppealThe defendant appealed the judgment to the Metropolitan Court of Appeal, but the appeal was unsuccessful. The Court approved the opinion of the Tribunal and added that though the word elements of the signs TV PAPRIKA and CHILITV were visually and phonetically different, their conceptual similarity was high. Conceptual similarity is significant if it evokes spontaneous ideas among consumers. From the opinion poll filed by the plaintiff, it was obvious that the defendant's sign evoked the plaintiff's word mark. The likelihood of confusion was enhanced as the defendant had also used his sign in television.Supreme CourtThe defendant filed a request for revision with the Supreme Court, pointing out that the opinion poll had only asked the question: "What is the meaning of the term "chilli"?" The defendant's request was rejected.(1) The Supreme Court held that, contrary to the Tribunal's view, in order to assume that consumers would consider the marks to be conceptually different, a more in-depth analysis was necessary.The Supreme Court held that, through the opinion poll, the plaintiff had proved that the average consumer interpreted the term "paprika" as part of the same context as "spices". The defendant had argued, on the contrary, that the average, sufficiently informed consumer would need to go through a long thought process in order to interpret the defendant's mark as having the same meaning as the plaintiff's mark.In this case, the conceptual similarity was acceptable even without being proved, based on common knowledge. As a result, the lower instance courts had been right in holding that the likelihood of confusion could be stated without evidence. In case law, it is accepted that two marks need not be simultaneously present as the older mark can exist only in the memory of the consumer.The lower instances had also been also right in holding that the possibility of confusion was enhanced by the circumstances that the services for which the marks had been used (ie, television shows and entertainment) were identical, or very similar. The standard case law is that the courts can simply state a likelihood of confusion in such circumstances; a special demonstration is not necessary.CommentThe standard case law in many countries is that the criteria of likelihood of confusion in respect of trademarks can be met by visual, phonetical or conceptual similarity. Though visual or phonetical similarity is often stated, conceptual similarity (ie, association by consumers) occurs seldom in Hungarian case law.In this case, the two dominant elements of the conflicting signs were "paprika" and "chilli". Both of these are spices, and both are hot. This quality (ie, being hot) is transferred to the mind of consumers – that is, viewers could have understood that the television shows streamed belonged to the same or a related origin. This is why the Supreme Court referred to association when discussing the interpretation of consumers.Opinion polls are not cheap and their use in trademark cases is rare. Referring to the opinion polls quoted by the Court, it is worth mentioning that a representative sample of 1,000 persons had been questioned (90% of them replied). 94.8% of the replies were associated with paprika:56.6% answered "paprika" (in general);17.7% answered "spicy paprika";15.7% answered "strong paprika";6% answered "hot paprika";0.3% answered "red paprika"; and0.3% answered "chilli paprika".The defendant filed a further opinion poll in which, in answer to a similar question, 48% of the interviewed persons replied "strong, hot". This second opinion poll was not mentioned by the courts, possibly because it went in a different direction and did not impact the consumers' understanding of the origin of the service. Reference to origin is the basic function of a trademark, while reference to the quality or characteristics of something (ie, hot) is only a secondary function. It therefore makes sense that the courts made use of the opinion poll that reported on answers in relation to the association between paprika and chilli.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.Katalin Árva, attorney at law, assisted in the preparation of this article.Endnotes(1) Pfv IV 20 717/2018.