Facts HIPO decision Review Appeal Comment

Facts

An application for the device mark LAPOSA BADACSONY (Figure 1) was filed in Class 33 for wine. J Laposa, a well-known winemaker and writer on wine, filed a successful opposition action.

 

HIPO decision

The Hungarian Intellectual Property Office (HIPO) held that the 'Badacsony' word element of the mark was descriptive, as it is the name of a well-known wine region. Further, the HIPO held that the dominant element of the applied-for mark was the surname 'Laposa', which was laid out in a specific typographical composition. The applicant did not obtain a consent letter from Laposa, whose name was known by specialists. As Laposa was not included in the applicant's trade name, the HIPO allowed the opposition.

Review

The applicant filed a successful request for review. The Metropolitan Tribunal held that the name Laposa is uncommon. Further, the opponent was known by name as a wine blogger. However, the tribunal held that there was no confusion between the well-known name of the opponent and that of the applicant company's owner, which was also Laposa, as the latter was as well known as the opponent. The tribunal stated that the applicant's marketing activity had been so intense that it had resulted in the acquisition of the property named in the applied-for mark. As the parties had cooperated before the opposition procedure, the tribunal concluded that the opponent had previously consented to the applicant's use of the name. As a result, the tribunal held that the lack of a formal consent letter was not an obstacle to obtaining protection of the applied-for mark.

Appeal

The opponent filed an appeal. The Metropolitan Court of Appeal disagreed with the tribunal and held that it was a decisive factor that the applicant had not obtained a consent letter from Laposa, as required by Section 7 of the Trademark Act. B Laposa was manager of the applicant company when the application was filed; however, the main word in the applicant's trade name was 'Bazaltbor' (ie, wine from the Basalt). As the opponent was well known by name among winemakers, it was indispensable for the applicant to obtain his consent.

Regarding the applied-for mark, the court stated that the name Laposa was not used alone, but with the geographic name Badacsony, and that the letters were in a special composition. Further, the applicant had failed to prove that the name Laposa had become independent or been transformed into a trade name. In addition, the use of the name was detrimental to the opponent (8.Pkf.25.856/2015).

Comment

This case was complex, as the applicant had obtained the consent of a member of the Laposa family who was in the same profession (albeit in a lesser-known position). This explains why the decisions rendered by the various forums differed.

Further, there was a conflict between the law regarding property and the protection of vested rights (eg, with regard to a sign that has acquired distinctiveness) and the law regarding the protection of someone's identity (eg, their surname). The Metropolitan Tribunal opted to uphold the first law, while the Metropolitan Court of Appeal opted to uphold the second.

If an identical device mark was applied for as a European mark, a guess can be made as to what the EU Intellectual Property Office Board of Appeal or the EU General Court would decide. The unusual typography would also likely be considered in the decision.

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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