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Tamás M. Kocsis
Recent case law from Hungary
ECTA Law Committee Meeting21/10/2016
Bordeaux
Deceptive trade marks
Legal basis: Art. 3 (1) (b) Hungarian Trade Mark Act (HTMA)
• A sign may not be granted trade mark protection if: – it is liable to deceive public as to the nature,
quality, geographical origin or other characteristics of the goods or services.
1) M1302310 – „I love Giorgio Rossi” (figurative)
• The applicant is a Hungarian company, the specification is: „clothing, headgear, footwear” in Class 25.
• The Hungarian Intellectual Property Office (HIPO) refused the application and in the reasoning stated the followings:
• Italy is well known for producing clothing articles of high quality;• the application is therefore might be deceptive for the quality of
the goods concerned;
• perceiving the sign, the consumers might easily conclude that the goods are actually from Italy, which is not clear from the specification of the goods;
• Assuming that the goods are from Italy, the consumers might have positive expectations in relation to that special characteristic of the goods, namely, that they are of good quality.
REMARKS:
(i) The sign contains only an Italian or „Italian-like” name Giorgio Rossi, there is no word about Italy. Can be a simple name a clear reference to a country?
(ii) What would be the situation if the applicant would be an Italian company?
2) A1163208 – International Trade Mark Application covering Hungary
ALBA REGIA (word)
• The applicant is a Russian company, the specification is:
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.Class 33: alcoholic beverages (except beers).
• HIPO refused the application and stated:• the application might be deceptive for the qeographical origin of the
goods concerned;• ALBA REGIA is the ancient Roman name of the Hungarian town called
SZÉKESFEHÉRVÁR;
• The consumers might think that the goods concerned are connected to that Hungarian town, and in general, to Hungary;
• Beverages are more welcomed in Hungary if we say that they are from Hungary;
• The expression should be kept free to those applicants who might have a real connection to Hungary and to SZÉKESFEHÉRVÁR.
REMARKS:
(i) The said Hungarian town is not particularly famous of its beverage industry – it is an „ordinary” historic town;
(ii) Do average consumers know ancient Roman town names in a level that they can connect it with the recent name of the town?
(iii) Again: why is it so important that the applicant is from Russia?
3) A1193597 – International Trade Mark Application covering Hungary
MANHATTAN SUPERSIZE SEDUCTIVE EYES (word)
•The applicant is a German company, the specification is:
Class 3: Cosmetics, namely eye make-up products.
•HIPO refused the application and stated:
• the application might be deceptive for the geographical origin of the goods concerned;
• MANHATTAN is in NEW YORK, while NEW YORK is in the UNITED STATES;
• It is a well-known fact for the Hungarian consumers that MANHATTAN is in the UNITED STATES; and
• therefore they might be misled as to the geographical origin of the goods concerned, since the applicant is a German company.
REMARKS:
(i) The application contained another words: „SUPERSIZE SEDUCTIVE EYES”...
(ii) Again: why is it so important that the applicant is from Germany while MANHATTAN is in the US?
The Hungarian Court
1) Decision 3.Pk.23.177/2014/8 – „I love Giorgio Rossi”
HIPO’s decision is confirmed the sign is deceptive: • the sign as it appears is a typical reproduction of an Italian clothing
product, which is obviously deceptive if the goods are not originated from Italy.
• The positive expectations as to an Italian origin is well-known fact and there is now need for further evidence from the side of the Office relating to that.
2) Decision 3.Pk.23.177/2014/8 – ALBA REGIA
HIPO’s decision is confirmed: the sign is deceptive: • The relevant, reasonably well informed and reasonably observant
and circumspect consumer will know that it is an ancient name of a town within the country;
• This is the question of general cultural knowledge;• It is an important historical town with a positive reputation;• The use of the Roman name of this town as a trade mark should be
extraordinary and allowed to a proprietor with real boundaries to the town;
• Contrary to the HIPO’s statement, the confirmation of a Hungarian origin is not sufficient, the link should exist explicitly with the town.
3) Decision 3.Pk.22.004/2015/5 – MANHATTAN SUPERSIZE SEDUCTIVE EYES
HIPO’s decision is annulled and the sign is eligible for registration:• MANHATTAN is not only a geographical place but also a reference to the
world of fashion;• The Office did not take into account the additional words in the sign;
these words also refer to the world of fashion;• The message of the whole sign is that it refers to a fashion product in
Class 3;• In fact, the Office did not prove that there exists cosmetics
manufacturing in Manhattan.• Altogether, the factual ground of the deceptiveness is missing: the
factual ground only exists if the consumers attribute to the goods such characteristics which they obviously do not have.
• The seat of the applicant itself is not a decisive factor.
Summary - Questions• The above Hungarian applications were refused based on
deceptiveness only; NOT based on non-distinctive character referring to the possible geographical origin of the goods and services (MONACO, OLDENBURGER etc. shall not apply).
• HIPO’s practice is clearly contradicts EUIPO’s practice as to deceptiveness.
• Inconsistency as to the burden of proof (Italy=quality, ALBA REGIA=SZÉKESFEHÉRVÁR vs. fashion industry in Manhattan)
• What is the practice in other Member States?
