Facts

An application was filed for the word and coloured device mark COCKTAIL WORLD.

The owner of an almost identical unregistered mark used in Classes 25, 32 and 33 filed an opposition action.

The Hungarian Intellectual Property Office (HIPO) granted the opposition in respect of the likelihood of confusion, but rejected it in respect of the prior mark's reputation. HIPO agreed that the unregistered mark was known to consumers, but held that the level of knowledge was insufficient to prove the mark's reputation.

The applicant requested a review before the Metropolitan Tribunal, which was rejected. While the tribunal agreed with HIPO in respect of the likelihood of confusion, it found that HIPO had failed to consider the claim on the basis of copyright. In this respect, the tribunal stated that the applied-for mark was a direct copy of the prior mark, considering that the parties were competitors. This behaviour of the applicant contravened Section 2 of the Act on Unfair Competition and, consequently, Section 5(2)(a) of the Trademark Act (3.Pk.25.029/2015).

Comment

The opponent did not contest HIPO's arguments regarding the unregistered mark's lack of reputation. Public knowledge and reputation are separate legal situations that are covered by different legislative provisions – as several European Court of Justice decisions have shown.

However, HIPO's procedural failure to examine the consent of the owner of the unregistered mark is more serious. It is a known procedural rule that administrative and court decisions must examine all claims included in an opposition, even if one of the claims is successful. This is because it is impossible to know which party may request a review or file an appeal against the decision.

The tribunal's cumulative reference to the Trademark Act and the Act on Unfair Competition is also interesting, as such references are rare in trademark cases.

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email (vida@danubia.hu). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.

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