The applicant filed a device mark with the wording “Laposa Badacsony” in class 33 for wines.

Dr. J. Laposa, a known wine maker and writer on wines filed opposition which was successful. The Hungarian Intellectual Property Office told that the word element of the mark “Badacsony” is descriptive, as it is the name of a well-known wine region. In addition, the design contains the family name Laposa in which only the composition of the letters is specific and this name is the dominant element of the mark applied for. Moreover, the applicant has not obtained a Consent Letter from the owner of the family name Dr. Laposa, whose name is known by specialists. At least the family name Laposa was not contained in the applicant’s trade name, as a result HIPO allowed the opposition.

The request for review filed by the applicant was successful. The Metropolitan Tribunal said that the family name Laposa is very seldom, moreover the opponent’s name is known as a blogger, as a writer on wines. There is no confusion between the well-known family name of the opponent and that of the owner of the applicant company which is also Laposa, as the latter is as well-known as the opponent. The Tribunal stated that the applicant’s marketing activity was so intensive that this resulted in the acquisition of the property of the mark applied for. As prior to the opposition procedure the parties cooperated, from this one can conclude on the previous consent of the opponent. As a result the lack of a formal Consent Letter is not an obstacle to the protection of the mark applied for.

The opponent filed an appeal. The Metropolitan Court of Appeal came to a different conclusion and said that it is decisive that the applicant has not obtained a Consent Letter from the owner of the family name Laposa as required by Sec. 7 of the Trademark Act. It is a fact that B. Laposa was the manager of the applicant company at the date when the application was filed. The leading word of applicant’s trade name is “Bazaltbor” (Wine from the Basalt). Opponent’s name and person are well-known by wine makers. In such situation it would have been indispensable to obtain the consent of the owner of the family name. Regarding the applicant’s trade name the Court states that the name Laposa was not used standing alone but together with the geographic name Badacsony and in special composition of the letters. Moreover it was not proved by the applicant that the family name Laposa became independent, or transformed to a trade name. In addition: the use of this family name in question is detrimental to the opponent (8.Pkf.25.856/2015).

Comments

1. The case was not simple: the applicant obviously received the consent from one member of the family Laposa, who is another member of the same family, moreover also in the profession (but less). This situation explains why the decisions rendered by different forums were different.

2. Moreover, there is also a conflict of laws: the law on property, protecting vested rights i.e. a sign that acquired distinctiveness on the one part and law on protecting personality i.e. family name on the other side. The Tribunal opted for the first one, the Court for the second one.

3. In the hypothesis that an identical device would be applied for as a European mark we could guess what by EUIPO’s Board of Appeal or by the EU General Court would be decided. I can imagine that the unusual typography would be also considered when the decision would be made.