The applicant filed the device mark FINE (below) for goods in Class 3.(1)
The holder of the device mark FINE DREAMING (below), which was registered in Class 3 (among other classes), filed a notice of opposition.
The Hungarian Intellectual Property Office (HIPO) rejected the opposition, holding that the FINE mark was not similar to the opponent's mark as the overall impression of the two marks was different. In respect of the list of goods, HIPO referred to the European Court of Justice's CANON judgment (C39/97) on the similarity of goods.
The opponent requested the Metropolitan Tribunal to review the decision. The tribunal rejected the request, holding that the applied-for mark did not hinder the use of the prior mark. The word elements used were descriptive, but were different from those in the opponent's mark. Moreover, the tribunal stated that it had to be considered that the opposed mark had been used for a long time.
The opponent filed an appeal, which the Metropolitan Court of Appeal rejected. In its decision the court stressed that the average consumer could see the verbal, phonetic and conceptual differences in the word element DREAMING in the opponent's mark and the device elements (eg, the globe and frame) in the device. In respect of the descriptive character of the applied-for mark, it was unnecessary to examine whether there was a likelihood of confusion. Moreover, the use of the applied-for mark was also irrelevant, contrary to the statement of the tribunal. However, in regard to the likelihood of confusion, the tribunal's decision was correct and it was thus approved by the court (8.Pkf.25.38.308/2015).
The likelihood of confusion is an evergreen subject in trademark cases, and across the whole of IP case law. The questions of what constitutes imitation and whether there is a likelihood of confusion should always be considered on a case-by-case basis.
In the present case it is interesting that although the consideration of the tribunal and the court differed in respect of two points, the final result was the same: there was no likelihood of confusion. Thus, this final conclusion of the three instances, including the HIPO, is convincing.
For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8800) or email (firstname.lastname@example.org). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.
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