FACTS
The applicant is owner of a word mark and two word-and-device marks each comprising the term “Használtautó” [meaning: ”second hand car”], registered in class 35 for advertisement, in class 38 for telecommunication services and in class 41 for entertainment services. Moreover, he is owner of an identical domain name. The defendant is owner of a similar domain name used for internet advertisement of cars.
The claimant sued for trademark infringement and unfair competition. The Metropolitan Tribunal said that with his advertisement the defendant infringed the claimant’s trademark and condemned him for trademark infringement. Further, the Tribunal said that the suffix “for sale” figuring in the defendant’s advertisements is not sufficient to make a distinction from the mark of the claimant. Therefore, the domain name used by the defendant can be confused with claimant’s mark. (As the Tribunal condemned the defendant for trademark infringement, it did not examine the claim for unfair competition.)
The defendant filed an appeal with the Metropolitan Court of Appeal, but this was rejected. The Court approved the grounds stated by the Tribunal and added that the defendant’s advertisements, informing the public using the claimant’s device mark constituted unfair competition, too. Moreover, the Court said that though the word component of the figurative mark had no inherent distinctive character, in a procedure of cancellation against the claimant’s mark, it had been established that the mark has acquired distinctiveness through its intensive use.
The defendant requested revision with the Supreme Court, but this was also rejected. The Supreme Court approved the grounds presented by the two lower instances but completed the operative clause of their judgement with the statement that infringement was also committed by using the domain name of the claimant (Pfv.IV.20.700/2018).
Comments
It is interesting to state that every instance dealing with the case hereabove reported went a step further than the previous instance, namely:
- The Tribunal condemned the defendant for infringement of the claimant’s device mark;
- The Court stated that the behaviour of the defendant was also unfair;
- The Supreme Court condemned the defendant also for infringement of the domain name.
With the Supreme Court’s judgement, the circle of stating the defendant’s fault became complete.
The Supreme Court’s decision is also useful as the applicant’s device mark is contestable by view of marketing psychology, namely it was not per se distinctive, but it acquired distinctiveness only by use. As the defendant filed for cancellation of claimant’s device mark, and this was rejected, all three instances were correct condemning the defendant. I mean this does not change the fact that the word component of the claimant’s device mark is not inherently distinctive but as a result of acquired distinctiveness.
In-house Counsel
Doctor of the Hungarian Academy of Sciences
Partner
Plaintiff’s trademarks and domain name:
<hasznaltauto.hu>
