The cancellation of the mark WU2 was requested with reference to a prior WU2 wordmark and for similarity of the prior WU2 device mark, which were known by the owner of the later mark.
The owner of the attacked mark requested suspension of the cancellation procedure with reference to the suit initiated by him against the applicant of the cancellation procedure on nullity of the agreement on assignment of the identical mark.
The Hungarian Intellectual Property Office (HIPO) suspended the cancellation procedure until the final decision on the nullity procedure on the assignment running before the Metropolitan Tribunal, holding that the claim to be judged by the Metropolitan Tribunal is a preliminary question as regulated by Section 43 of the Trademark Act.
Review of HIPO’s decision was requested with the Metropolitan Tribunal, but this request was rejected by the Tribunal. It said that the procedure on the nullity of the assignment agreement is such a preliminary question of the cancellation procedure in which it can be clarified whether at the filing date of the mark, the cancellation of which is requested, his owner was entitled to use the mark WU2, moreover, whether the applicant was in bad faith when filing his application, further, the existence of intention of fraud would be necessary. If in the said procedure on annulment of the assignment agreement the defendant will be the successful party, the owner of the mark WU2 will be the claimant. As a result it can be clarified by the Tribunal in the suit whether the owner of the mark, the cancellation of which is requested, was entitled to use of the mark WU2 at the date of filing of the trademark WU2.
Against the decision of the Tribunal an appeal was filed with the Metropolitan Court of Appeal, but it was also rejected. The Court said that the decision of the Tribunal was substantially in accordance with the decision of HIPO. As the main question to be clarified is whether the applicant of cancellation of the mark WU2, the cancellation of which is requested, was entitled to use this mark at the filing date. (8. PKf. 26.284./2017)
The mark WU2 is well-known in Hungary for shampoo. It is not surprising that a competitor tried to acquire this mark. The question of bad faith was raised but not answered by the Courts, as the decisions reported here are of interim character.
The rule on suspension of a suit or an action is well-known in civil and in administrative procedural law. ( Code of Civil Procedural Law, Act on Administrative Procedural Law)
This institution is adapted by Trademark Law (Patent Law, etc.) with same changes assimilated to the trademark procedure Sec. 34(1) of the Trademark Act as follows:
“If a lawsuit is launched concerning a trademark application or entitlement to the trademark, the trademark proceedings shall be suspended, pending final conclusion of the lawsuit. Where the final decision in a trademark proceeding requires the preliminary judgement of an issue where the decision lies with another authority, the Szellemi Tulajdon Nemzeti Hivatala ( HIPO) shall suspend the trademark proceedings.”
Doctor of the Hungarian Academy of Sciences