Facts

The applicant in a recent case sought to register the mark THE FACE SHOP in Classes 3 and 35 for cosmetics. The owner of the EU mark THE BODYSHOP, which was also registered in Classes 3 and 35, filed an opposition action on the basis of likelihood of confusion and its mark's reputation.

The opposition was successful. The Hungarian Intellectual Property Office (HIPO) found that there were visual, phonetic and conceptual similarities between the marks and that their associated goods were identical. Further, the prior mark was reputed.

The applicant filed a request for revision with the Metropolitan Tribunal. The request was rejected, although on somewhat different grounds.

The tribunal found that there was a likelihood of confusion and that, as the opposed application was also filed for cosmetics, this could have led to association in consumers' minds. However, the tribunal held that the HIPO had erred in its examination of the prior mark's reputation, as the existence of the likelihood of confusion was sufficient grounds to reject the later application. Similarly, if the application had been rejected on the basis of the prior mark's reputation, the examination of the likelihood of confusion would have been unnecessary (3.Pk.25372/2015).

Comment

The HIPO considered all of the arguments in the case – namely, the likelihood of confusion and the prior mark's reputation. However, the tribunal found this to be superfluous and explained that if a likelihood of confusion exists, reference to reputation is unnecessary. In addition, these two grounds of refusal are different in respect of the legislation's aim of introducing specific protection for reputed marks.

The lesson learned by the HIPO conforms with European Court of Justice case law, such as its decision in Impulse, in which it held that the objective of Articles 15(1) and 51 of the EU Trademark Regulation (207/2009) is different to that of the provisions relating to the extended protection conferred on reputed trademarks (C-125/14, para 21).

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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