FACTS
The applicant requested registration of the term “GIGASPEED” for telecommunication and other goods in class 9. The Hungarian Intellectual Property Office (HIPO) rejected the application. It held that the applied mark is not distinctive as the element “giga” signifies an enormous quantity and the word “speed” means velocity. In the rejecting decision it was held that due to the spread of computer technology, the average consumer is aware of the term “giga”, e.g., for the speed of Winchesters and for the capacity of processors(“gigabyte”).
The applicant filed a request for review with the Metropolitan Tribunal and its request was successful: the Tribunal ordered the registration of the mark applied for. It was stated that the word elements ”giga” and “speed” may eventually refer to a billion-time speed, but the recording of such is not possible in the list of goods, it is rather a kind of publicity, which refers to the speed and capacity of the goods branded by the mark. Such an association can fulfil the publicity the function of a mark. The applicant is right in his argumentation, namely that in the mark applied for the term “GIGASPEED” does not figure in the English language, moreover even for professionals in telecommunication this term is not considered as a characteristic of the goods. As a result, the applied mark shall be considered as a fancy word. Therefore, the applicant’s trademark protection does not prohibit competitors from providing information relating to goods of similar purpose. (Pk.29.845/2000.).
Comments
Distinctiveness is a basic requirement of the Trademark Law for a sign for which the applicant requests trademark protection. An exclusive right on the market can be granted only for a distinctive sign which is a basic requirement worldwide, but deciding the question is often not easy. In the case reported above the Hungarian Intellectual Property Office’s answer was negative, while the Tribunal’s reply was positive.
Let us remind you that the reported case was an administrative one, a so-called ex parte procedure. In inter partes proceedings, e.g. in a cancellation action with participation of a claimant, the Tribunal, the Court of Appeal and eventually the Supreme Court would have had to examine more carefully whether the word “GIGASPEED” exists in the English language or not, or whether its non-existence is sufficient to support that the term has distinctive character. Finally, the decision would also depend on the actual case law policy, i.e., whether it is rigorous or favourable.
In-house Counsel
Doctor of the Hungarian Academy of Sciences
Partner
