The Applicant filed the mark „VÁSÁRHELYI TERV” (Plan VÁSÁRHELYI) in classes 41, 42 and 44. Against the application two observations were filed. The Observer No. 1. stated that the Applicant had applied for registration in bad faith, namely the Applicant’s intention was not to differentiate its services, but to prohibit the Observer as well as the Hungarian General Directorate of Water Management from using the term “Vásárhelyi”.

The Observer No. 2. stated that term applied for is an element of a characteristic expression for  state plans and investments. As a result, the term applied for is deceptive in respect of the consumers.

The Hungarian Intellectual Property Office (HIPO) rejected the application. It said that the application is deceptive as in 2003 the Hungarian government started a program called Development of the VÁSÁRHELYI TERV in respect of the river Tisza Valley and flood prevention.  This program received its name after the famous engineer Paul Vásárhelyi. The term „VÁSÁRHELYI TERV” has been repeatedly used since 2003 in different legal acts and became known by the public. The bad faith of the Applicant is evident by the fact that before the application he acquired the mark VÁSÁRHELYI.

The Applicant requested review with the Metropolitan Tribunal which was rejected. It was held that the Office was right to refuse protection considering the numerous legal acts in which the term „VÁSÁRHELYI TERV” appears to the consumers who can believe that the mark applied for is in connection with a state activity. As a result, the application can be misleading for the consumers. Moreover, the fact that the term „VÁSÁRHELYI TERV” is used widespread, of which the Applicant was aware, too, is a proof of acting in bad faith. From the warning letters written by the Applicant to the state authorities it is evident that his goal was to hinder the usage of his family name. In conformity with case law the fundamental task of the trademark is distinction of the owner’s services. If the goal of the trademark application is to hinder others from using a term, this realises the use in bad faith, too.

The Applicant filed an appeal with the Metropolitan Court of Appeal, but it was also rejected.

(8. Pkf. 26.253/2017)

Comments

Deception is prohibited since the Greeks and Romans. The same prohibition exists in European and Hungarian law, not only in statute trademark law, but more generally in commercial and civil law, too. Regarding the antonyms of good faith and bad faith, this has been known also since the Roman times (Bona fides – mala fides) in Latin with the prohibition of the latter. This prohibition exists of course also in the European law (e.g. Gold Bunny C-569/08), as well as in the Hungarian statute and case law.

Both prohibitions (deception/ bad faith) have a moral content. I believe that they had already existed before the Greek and Roman judges started to apply them. In the case referred to here the misleading use of the name „VÁSÁRHELYI TERV” appears.  In fact, Pál Vásárhelyi was a leading person in the planning of flood protection in Hungary in the XIX. century. As a right hand of the Count István Széchenyi, he was the head of a team planning flood protection of the Lower Danube (now in Serbia, the last 100 kilometres before Belgrade) and the river Tisza and its tributaries. He was also a member of the Hungarian Academy of Sciences and author of some scientific books on water economy. He died during a professional intensive discussion.

It is no accident that the Hungarian authorities chose his name as a symbol for flood protection. The term „VÁSÁRHELYI TERV” is even today widely known by the public.

Dr. Sándor Vida LLD.
In-house Counsel
Doctor of the Hungarian Academy of Sciences

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The Hungarian applicant filed the word mark

ECUMENICAL WORLDMUSIC FESTIVAL

word combination in classes 35,41,43 and 45. The mark refers to a religious music event

The Hungarian Intellectual Property Office (HIPO) rejected the application referring to the EU Court of Justice’s BIOMILD Judgement (C-265/00) which holds that the combination of several elements which are not distinctive does not result in a distinctive sign. However, a non-distinctive sign can acquire distinctiveness. In this respect HIPO referred to the EU Court of Justice’s CHIEMSEE judgements (C-108/97 and C109/97), which define the conditions of acquiring distinctiveness. Though the documents filed by the applicant were not found sufficient to prove distinctiveness acquired.

The applicant requested review with the Metropolitan Tribunal, but it was unsuccessful. The Tribunal said that registration of non- Hungarian words must be also refused if their Hungarian meaning is not distinctive. This is the standard case law of the Supreme Court. (3. Pk. 23.534/2017)

Comments 

Arguments of the applicant stand on two feet, namely

• the mark applied is distinctive, as the Hungarian public does not understand the English world combination, as a result the mark is distinctive in Hungary
• If it is not distinctive per se it acquired distinctiveness per use.

The Office examined both arguments and rejected them as above reported. As the Tribunal examined only the first question, i.e. distinctiveness, I believe that the applicant filed request for review only in respect of this first question.

The Tribunal made it easy referring to the case law of the Supreme Court. Therefore, I believe that it is necessary to deal with this case law. From my point of view this case law was correctly applied by the Tribunal, since the wording of the mark was English, a language being understood by a big part of Hungarians. The same may be valid also for a mark applied for in German words, but I find it questionable in respect of marks filed in French, Spanish or Polish, but these are only thoughts for the application of this case law in the future.

The second question (lack of acquired distinctiveness) was examined only by the Office. Considering the great practical importance of such situation I think it is worth quoting the relevant findings of the EU Court of Justice referred to by the Office, too, namely: “In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use  of the mark has been; the amount invested by the undertaking  in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as origination from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.” (Paragraph 51)

Dr. Sándor Vida LLD.
In-house Counsel
Doctor of the Hungarian Academy of Sciences

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