Facts

Against the owner of a three-dimensional mark, registered for biscuit and tea biscuit (class 30) cancellation request was filed for lack of distinctiveness (Sec. 33 TMA).

The request was successful; the Hungarian Intellectual Property Office (HIPO) cancelled the mark referring to two grounds.

In the ground the HIPO referred to lack of distinctiveness [Sec.2(2)(a)] and said that the form of the three-dimensional mark is usual, and known, moreover HIPO told also that the mark was unlawful [Sec. 5(2)(a) TM Act], i.e. the filing was made without consent of the user of a non-registered identical resp. similar form.

The owner of the cancelled mark filed request of review with the Metropolitan Tribunal, which was rejected. The Tribunal confirmed that there was lack of distinctiveness of the three-dimensional mark.

But in respect of unlawfulness, i.e. unfair competition the Tribunal had another view. It stated that not only the applicant used the contested form but several other producers also, insofar the latter had no exclusive right on the contested form, as a result neither Sec. 2 (general clause of the Act on Competition) nor Sec 6 (prohibition of copying of the second Act) are applicable in connection with Sec. 5(2)(a) of the TM Act.

Against the decision the applicant requesting cancellation filed appeal, but this was dismissed by the Metropolitan Court of Appeal (8.Pkf.25.744/2014).

Comments

The detailed analysis of the quoted provisions of the Act on Unfair Competition is impressive. It happens seldom that the Tribunals deal so extensively with competition law in a trademark case.

One can appreciate this more relevant as the rejection of these arguments did not change the result obtained by HIPO.

Correlation between the trademark law and the competition law is subject of several studies, in Hungary too, but the cumulative application is justified only if the facts allow this. This is demonstrated by the present actual decision of the Tribunal as approved by the Court.

The only surprising thing is how it was possible that the HIPO registered the attacked three-dimensional trademark, not respecting the rigorous case law of the EUCJ relating to the protection of three-dimensional marks.