Facts

The applicant in a recent case filed an application to register a device mark which featured the name 'Stowasser.J' for goods in Class 15 – namely, Turkish clarinets (tárogató in Hungarian).

Two parties filed observations against the mark and the Association of Manufacturers of Music Instruments filed an opposition.

Decisions

On the basis of the observations and the opposition, the Hungarian Intellectual Property Office (HIPO) rejected the application.

The applicant filed a request for review with the Metropolitan Tribunal, which annulled the HIPO's decision and ordered it to a re-examine the application. The tribunal held that in respect of the rights to a name (Section 5(1)(a) of the Trademark Act) the HIPO's examination was unsatisfactory and should be repeated.

Following the tribunal's decision, the HIPO undertook a new procedure in which it invited the parties to file observations and evidence. The opponent did not reply. The parties who had filed the observations stated that the goods (Turkish clarinets) produced by the applicant were inferior in quality to those sold by Stowasser, who was deceased, and that this would damage his reputation. However, this statement was not proved; therefore, the HIPO dismissed the observations and granted the mark's registration.

The observers filed another request for review with the tribunal, which was once again unsuccessful. The tribunal held that as the observers were not parties to the registration procedure, the Trademark Act did not grant them the right to file a request for review. The tribunal once again held that the starting point for its decision was the prohibition on using another party's name (Section 5(1)(a) of the Trademark Act). As the observers were not named Stowasser, they could not contest the applicant's use of the name. Another issue that arose was the infringement of a deceased person's name where such infringement will damage their reputation (Section 86(3) of the former Civil Code 1959).

A similar prohibition concerns damage to a person's reputation, which will occur where a mark and the associated goods communicate a negative message to the public (eg, using the name in question on toilet paper). As the observers did not prove that such damage would occur in the case at hand, the request for review was rejected (1.Pk.25.385/2016).

Comment

The applicant in the above case was a pupil of Stowasser with respect to making Turkish clarinets, whereas the observers were his descendants, but had no tie to the profession. This begged the question of which tie was stronger in respect of the goods. Of course, this question had little relevance in respect of the ownership of a trademark comprising the term 'Turkish clarinet', which was also an element of the contested mark. It is unsurprising that neither the HIPO nor the tribunal dealt with this question, as it is arguably one of ethics and not the law.

Although there is a significant amount of case law concerning piety rights, it deals mainly with funerals and sepulchres. As such, the above case concerning a trademark is unusual. However, it is still in line with the case law on piety rights. Future case law on this matter will likely follow a similar vein, as the wording of the present Civil Code 2013 (Section 2:50(1)) is almost identical to that of the former Civil Code 1959 in this respect.

For further information on this topic please contact Alexander Vida at Danubia Patent & Law Office LLC by telephone (+36 1 411 8700) or email (vida@danubia.hu). The Danubia Patent & Law Office website can be accessed at www.danubia.hu.

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