The word mark PENTA was filed for building materials in Class 19 and building services in Classes 37 and 39 (Figure 1).(1)
The rights holder of the EU mark PIRELLI (Figure 2), registered in Classes 1 and 42, filed a notice of opposition claiming that the first letter of both marks – the elongated P (Figure 3), for which the PIRELLI mark was well known – was identical.
The Hungarian Intellectual Property Office (HIPO) rejected the opposition, finding that:
- the applied-for mark was visually, phonetically and conceptually different to the opponent's mark; and
- the similarity of the letter P in each mark was insufficient to create a likelihood of confusion.
Further, the HIPO held that although the elongated P was well known with regard to Pirelli tyres, the goods covered by the two marks were different.
The opponent requested a review of the HIPO's decision.
The Metropolitan Tribunal refused the request for review, holding that the two words are prima facie different and that the HIPO was right in finding that there was no likelihood of confusion. The tribunal held that the opponent's mark enjoyed a reputation only in respect of tyres, and that the opponent had failed to prove that the elongated P was well known. Further, the applicant's use of a similar font for the letter P did not exploit the reputation that Pirelli had acquired with regard to tyres, as the applied-for mark covered the sale of building materials. The tribunal cited European Court of Justice case law – in particular, judgments C-251/98 (Sabel v Puma) and C-39/69 (Canon). However, it held that these judgments were not applicable, as:
- the goods commercialised by the parties in the present case were different; and
- the parties were not competitors.
The opponent filed an appeal, which the Metropolitan Court of Appeal rejected. The court held that neither the wording nor the font of the marks created a likelihood of confusion. Further, the court held that although the reputation of the opponent's mark was incontestable, there was no likelihood of confusion as it would be clear to the average consumer that the marks covered different goods. Considering the informative function of the applied-for mark, the court held that it did not violate the opponent's mark.
As regards the special protection available for reputed trademarks, the court held that, in light of the case law, this does not apply where there is no likelihood of confusion. As a result, the court refused to examine the claim.
The court held that due to the lack of a likelihood of confusion, Pirelli's appeal was not well-founded (8.Pkf.27.004/2014).
It is unsurprising that all three instances found Pirelli's opposition which was based on the similarity of one letter to be exaggerated.
The protection of a single letter is problematic even when a special font is used. Pirelli's elongated P was protected in some countries as a result of the secondary meaning that it had acquired. However, even if Pirelli had been able to prove the reputation of the elongated P in Hungary, this may have been insufficient grounds for rejecting an application for a different word mark featuring a similarly elongated P which was used for different goods.
However, the court's refusal to examine the claim of special protection due to reputation in light of the case law is surprising. Although the case law has not been published, its existence is somewhat worrying.
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.