Der Grüne Punkt registered an international device mark in Classes 1 to 36, 39, 40 and 42 (Figure 1).
A cancellation procedure was filed based on lack of use, as the device mark had been used in conjunction with other marks owned by the producers of the goods to which it was attached. The Hungarian Intellectual Property Office (HIPO) cancelled the mark (except with regard to some services in Classes 39, 40 and 42), holding that this kind of use does not conform with Section 18 of the Trademark Act.
Der Grüne Punkt requested a review before the Metropolitan Tribunal, which rejected the request. The tribunal held that the opposed mark was not a certification mark with a special status insofar as it failed to be used in accordance with the general provisions of the Trademark Act. The tribunal did not contest that the opinion poll filed by the mark's owner – which attested that the mark was well known in Hungary – was convincing, but held that as the object of the procedure was use and not public knowledge, the poll was unhelpful.
Der Grüne Punkt filed an appeal before the Metropolitan Court of Appeal. The latter amended the HIPO's decision, rejecting the opposition and maintaining protection of the mark in Classes 1 to 3, 5, 7 to 9, 11, 12, 18, 26 and 28 to 33 and in the classes for which the lower instances had maintained protection. The court held that the mark had a real use. Further, it stated that it was irrelevant that the opposed mark had been used in conjunction with third-party marks, as the public had been aware of the mark and taken it into consideration when choosing environmentally friendly products. The court added that the tribunal had been right in holding that reputation alone is insufficient to prove use. However, in this case, the court held that reputation was relevant, although only in respect of the goods with which the opposed mark was actually used (8.Pkf.27.179/2016).
It is difficult to contest that the opposed device mark, known as 'green point', was used as a certification mark but not registered as such. However, the tribunal arguably went too far in cancelling the mark for non-use after requiring the traditional characteristics of use to be fulfilled.
Arguably, the court was right in examining on a class-by-class basis the goods for which the mark was reputed not only in Hungary, but also in several other countries, and rejecting the opposition with regard to classes of goods for which the mark was de facto used.
Although both the tribunal and the court considered the opinion poll – the first by excluding its relevance and the latter by accepting it – the court's approach is undoubtedly more convincing.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email ([email protected]). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.