Facts

The applicant in a recent case requested the cancellation of a three-dimensional (3D) mark registered in Class 30 for biscuits and tea biscuits, citing a lack of distinctiveness (Section 33 of the Trademark Act).

The request was successful; the Hungarian Intellectual Property Office (HIPO) cancelled the mark. With regard to the lack of distinctiveness, the HIPO referred to Section 2(2)(a) of the Trademark Act and held that the 3D mark's form was usual and well known.

In addition, the HIPO held that, in accordance with Section 5(2)(a) of the Trademark Act, the mark was unlawful (ie, it had been registered without the consent of the user of an identical or similar unregistered mark).

The owner of the cancelled mark filed a request for review with the Metropolitan Tribunal. The tribunal rejected the request, confirming that the 3D mark lacked distinctiveness.

However, the tribunal disagreed with the HIPO with respect to the mark's unlawfulness. The tribunal stated that as the contested form was used by not only the applicant, but also several other producers, the applicant had no exclusive right to the form. As a result, neither Section 2 (general clause) nor Section 6 (prohibition of copying, as per Section 5(2)(a) of the Trademark Act) of the Competition Act were applicable.

The applicant appealed the tribunal's decision, which was dismissed by the Metropolitan Court of Appeal (8.Pkf.25.744/2014).

Comment

The tribunal's detailed analysis of the Competition Act is notable, as it seldom deals so extensively with competition law in a trademark case. The competition aspects of this case are arguably more relevant, as the rejection of these arguments did not change the result of the HIPO's decision.

The correlation between trademark and competition law has been the subject of several studies, including in Hungary. However, the cumulative application is justified only if the facts so allow. This is demonstrated by the tribunal's decision, as approved by the court.

The only surprising element of this case is the fact that the HIPO was able to register the disputed mark, despite the rigorous European Court of Justice case law relating to the protection of 3D marks.

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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