Facts

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

 

Against this application opposition was filed by the owner of an almost identical non-registered mark used in classes 25, 32, and 33.

The Hungarian Intellectual Property Office granted opposition stating the likelihood of confusion but rejected the opposition in respect of reputation of the prior mark ordering that the latter is known by the consumers, but the degree of knowledge is not sufficient for proving its reputation.

The applicant requested review with the Metropolitan Tribunal. This request was rejected. The Tribunal agreed with the HIPO in respect of likelihood of confusion but HIPO did not deal with the claim based on copyright. In this respect the Tribunal stated that the mark applied was a complete copy of the prior mark, considering that the parties are competitors. This behaviour of the applicant was in contradiction with Sec. 2 of the Act on Unfair Competition and consequently also with Sec. 5(2)(a) of the Trademark Act (3.Pk.25.029/2015).

Comments

The statement of HIPO on lack of reputation of the non-registered mark of the opponent was not contested by the latter.

In fact, knowledge by the public and reputation are two rather different situations that are covered by different legal rules as the ECJ in his case law underlined several times.

The procedural failure made by the HIPO in respect of lack of examination relating to the consent of the owner of the non-registered sign is more serious: it is a known procedural rule that the decision (either that of the administration or that of the court) has to examine all claims included in the oppositions even if one of the claims are successful. Nobody can know which of the parties will request review or file appeal against the decision of the administration or the court.

The cumulative reference by the Tribunal to Copyright Act and the Act on Unfair Competition is also interesting; such references are rare in trademark cases.