FACTS
The mark Jazzy Pub was registered for services in class 43. The owner of the earlier mark JAZZY which was registered 7 years earlier in classes 38,41 and used in Radio Jazzy requested cancellation of the later mark. In his request he stated that until February 2013 the owner of attacked mark was his licensee and he filed the attacked mark after this date.
The Hungarian Intellectual Property Office (HIPO) annulled the mark Jazzy Pub. It was told that when the applicant filed an almost identical mark with the prior one he was aware of the existence of the mark JAZZY, moreover he was fraudulent and in bad faith.
The owner of the mark requested review with the Metropolitan Tribunal, but this was dismissed. The tribunal said that HIPO was right stating that the owner of the cancelled mark was aware of the existence of the older mark. Further, the parties cooperated for some years, using the prior mark of the applicant. It was obvious that the goal of the owner of the attacked mark was to obtain an exclusive right for an almost identical mark, as a result he was fraudulent and in bad faith. The owner of the annulled mark filed appeal with the Metropolitan Court of Appeal, but it was unsuccessful. The court told that the appellant defended himself by pointing to the difference of the goods resp. services; as he applied for class 41, but as in the former cooperation of the parties the appellant reserved the place for the jazz performances, and the owner of the other mark Jazzy Pub provided the music. As a result the applicant ought to know that if he has exclusive right based on class 41, he is able to prevent the other party from organizing concerts or to allow for thirds to do the same. (8.Pkf. 26.201/2018)
COMMENTS
The Hungarian case law has prohibited the acting in bad faith for centuries, recently the Civil Code since 1958 and the Trademark Act since 1979 ( Harmonization with the law of the EU). As a result, with bad faith references in trade mark cases one meets only in the last decades, e.g. the Duna Gate case (see Danubia’s website).
The (Hungarian) Trademark commentary (Budapest 2014) says in this respect, that bad faith is an absolute ground for refusing protection, or if the mark was registered, it can be annulled. Moreover, even if the veritable owner revokes the cancellation request, the authority or the court can continue the procedure as this is an ACTIO PUBLICA. The two main premises for establishing bad faith are that at the date of application
– the applicant had to know the existence of the prior mark
– his intention was unfair.
The referred two decisions of the courts are in line with the case law of European Court of Justice ( Lindt C-529/07) holding that one can speak of bad faith if the applicant was aware of the prior mark.
Dr. Sándor Vida LLD.
In-house Counsel
Doctor of the Hungarian Academy of Sciences
