Facts

An application was filed to register the mark SAVARIA TÉRKO for stone tiles and linings (Class 19). The dominant element of the mark (ie, Savaria) was the Latin name of the west Hungarian town of Szombathely.

A competitor filed an opposition action, alleging prior use of the name 'Savaria'. The competitor had not registered the name, but had used it for stone tiles.

Decisions

The Hungarian Intellectual Property Office (HIPO) rejected the opposition and ordered the mark's registration. The opponent filed a request for review with the Metropolitan Tribunal, which was successful. The tribunal ordered the HIPO to repeat the examination procedure.

On re-examination, the HIPO once again rejected the opposition, holding that the opponent's mark had not acquired secondary meaning. Thus, it could not be protected under Section 6 of the Act on the Prohibition of Unfair Market Behaviour 2016.

The opponent filed another request for review of the HIPO's decision with the Metropolitan Tribunal. In the second procedure, the tribunal allowed the opposition and ordered the cancellation of the applied-for mark. The tribunal agreed with the HIPO that the opponent's mark had not acquired secondary meaning, but stated that the opponent had used the mark on its products without registration along with a series of other place names (eg, London, Paris, Rome and the Latin names of various Hungarian towns, including Aquincum and Arrabona).

As a result, the applicant's use of the name 'Savaria' constituted the unlicensed use of a mark, which contravened Section 2 (General Clause) of the Act on the Prohibition of Unfair Market Behaviour (3 Pkt. 22343/2016).

Comment

Trademark owners often allege infringement of both the Trademark Act and the Act on the Prohibition of Unfair Market Behaviour in Hungarian enforcement proceedings. In such procedures, competition law usually takes a secondary position – namely, if a trademark infringement claim fails, the claimant will file a secondary competition law infringement claim, which may be more successful.

However, the application of competition law in registration (ie, opposition) proceedings is new to Hungarian case law. As far as is known, the only other instance of such an application is the P PALACE HOTEL HÉVÍZ case (for further details please see "When is a trademark application unfair??").

The legal basis for this case law is Section 5(2)(a) of the Trademark Act, which allows the Metropolitan Tribunal (and the HIPO) to link claims to other laws, including competition law.

Arguably, this case law should be welcomed. More than a century ago, the scholar Beck advocated for the integration of trademark and competition law in his monograph on trademarks (Budapest, 1934).

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (vida@danubia.hu). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.

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