The board game Gazdálkodj okosan (ie, Budget smartly) is commercialised in Hungary; the name is not registered as a trademark, but the manufacturer has recorded it in the Registry of Copyright Works.
A third party applied to register the colour device mark GAZDÁLKODJ OKOSAN! (Figure 1) in Classes 16, 28 and 41.
The game's manufacturer filed an opposition based on his earlier rights (Section 5(1)(a) of the Trademark Act).
The Hungarian Intellectual Property Office dismissed the opposition, holding that the device mark's graphics were visually characteristic, contrary to the name used by the opponent. Further, the opponent was unable to prove that the name used for the game was sufficiently known to the public.
The opponent filed a request for review, which the Metropolitan Tribunal dismissed. The tribunal held that Section 5(2)(a) of the Trademark Act can be applied only if the prior sign is distinctive. As the prior sign in this case lacked a distinctive character in respect of toys, it would be unjustified to reject the opposed application. Further, as the opposition was not well founded in respect of distinctiveness, it was unnecessary to examine further arguments presented by the opponent, especially as the Copyright Act contains no provisions on consent letters.
The opponent filed an appeal, but the Metropolitan Court of Appeal dismissed it on the basis of the tribunal's arguments (8.Pkf.25.267/2016).
The board game's name is rather well known – a Google search even leads to an English description of the game. If the opponent had applied for registration of the mark GAZDÁLKODJ OKOSAN, he would have been able to prevent the registration of a similar mark, at least in Class 28 (toys).
Under the Trademark Act, the board of opposition is limited to making quick decisions. More complicated situations must be settled by a normal contradictory procedure in which the judge has the possibility of global appreciation. The opponent's chances of protecting the game's name in respect of toys (Class 28) may have been better in the latter procedure.
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@example.com). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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