TRADEMARK CONFLICTS Vichy versus Vicky
Te brand name ‘Vichy’ has a good reputation in Hungary for cosmetics, skin-regeneration substances and anti-ageing skin products. Tese cosmetics enjoy high prestige.
Te owner of the Vichy trademark filed an opposition against the application for the ‘Vicky’ trademark. Te Hungarian Patent Office and the courts rejected the application. According to the court, the applicant for the Vicky trademark tried to unlawfully make use of Vichy’s goodwill when it filed the Vicky trademark for “bleaching products and materials used for washing, cleaning, polishing, and scrubbing; soaps, scents, scented oils, articles used for cosmetic purposes, hair washing products and tooth pastes”.
In establishing the similarity between the trademarks, three basic aspects were examined:
• The phonetic similarity when the word element is pronounced
• The visual similarity that can be established on the basis of the visual appearance of the marks, and
• The conceptual similarity between the essence behind the marks.
Te court has drawn a general conclusion that these marks are similar, and when doing so, the similarities between the companies’ merchandise were also taken into account. Te applicant argued that Hungarian consumers associate the word Vicky with the female name ‘Viki’ (short for Victoria) and this creates the required distinction, but this did not persuade the court. Te applicant also claimed that the word Vichy has no meaning in Hungarian. But the court observed that educated consumers might recall that during World War II, the seat of the French government was in the French city of Vichy.
Te Metropolitan Court found that “for a Hungarian customer, the word element of the applicant’s trademark—contrary to the word element of the opponent’s trademark Vichy—is immediately perceptible, clear and has a certain meaning even if it does not correlate with any property of the associated products, thus there is no conceptual similarity; on the other hand the similarity can be established by how the words are pronounced. Te opponent’s trademark is pronounced by consumers as ‘vyshy’ while the applicant’s mark [is pronounced] as ‘vyky’. Concerning the phonetics of the two words, they differ only in a non-emphatic consonant, thus the danger of confusion by the consumers exists.”
Te court agreed that the applicant’s designation is the local shortened version of the name Victoria
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and that the older mark Vichy does not have any real meaning. Based on that, the conceptual similarity could not be established; however, because there are phonetic and visual similarities between the marks, they are confusingly similar, since only one of the listed conditions is sufficient for establishing similarity.
Both the patent office and the court also considered the respective lists of goods of the two marks: “in the list of goods of the applicant, the products are partially identical and partially similar to the goods in the list of the opponent’s trademark. Te applicant for Vicky has sought protection for products which – from the point of view of similar fields of use, points of sales and group of consumers – qualify as identical from the point of view of trademark law.”
In its decision, the Metropolitan Court referred to the fact that the danger of confusion is higher when an older trademark is highly distinctive. Tis means that distinctive trademarks have a broader scope of protection than less distinctive marks. In the present case, it was found that Vichy is very distinctive, not only nationally but globally.
Blueberry versus Blackberry
Te owner of the trademark ‘Blackberry’ filed an opposition against the application for the newer trademark ‘Blueberry’. Blackberry products have become famous and have acquired a good reputation, primarily in connection with wireless mobile telephones capable of transmitting and receiving email messages, and providing Internet access in a simple and easy way. Blueberry tried to make use of this fame and goodwill, by applying its mark to similar products. Te Hungarian Patent Office, the Metropolitan Court and the Metropolitan Appeal Court agreed on the confusing similarity between the two trademarks. Tese authorities did not accept the applicant’s arguments that these words have definite meanings in English and therefore can be used as separate marks. Te court found that the degree of visual and phonetic similarity between these words is so high that the difference in the meaning is insufficient to exclude similarity in the sense of the trademark law.
Te owner of the newer mark initiated a supervisory proceeding at the Supreme Court of Hungary against the Metropolitan Appeal Court’s decision, and the Supreme Court fully upheld the decision.
No merci
A trademark application for the word ‘Merci’ in class 16 for hygienic paper products was filed in 2006. Te same applicant already had an earlier abandoned trademark and an actual earlier use backdating from 1994. Te owner of
the famous Merci trademark—protected in class 30 for chocolate products, which have been on sale since 1965—filed an opposition against this application. Article 12 of Hungarian trademark law provides protection for famous trademarks even in different classes, provided that the use of the trademark without good reason would hurt or take an unfair advantage of the distinctiveness or goodwill of the famous trademark. In this case, the marks were identical; however, the patent office and the Metropolitan Court could not establish the unfair advantage or dilution caused by the use of the newer mark. Te case has been appealed to the Supreme Court, so the decision has yet to be finalised.
Tis complex case rests on the remote nature of classes 16 and 30, and the ongoing use of the newer mark over a long period. A further component of the decision was that the turnover of the branded chocolate products has increased during recent years, so it was impossible to point to any adverse effects of the products in class 16 on the sale of the chocolate products. Finally, the word Merci has a general meaning and no distinctive nature, while acquired distinctiveness is always connected to certain products.
Even if the appeals process reverses the position, it is clear that famous trademarks are not necessarily safe across all classes, and Article 12 should be analysed in detail.
Michael Lantos is managing partner at Danubia Patent & Law Office LLC. He can be contacted at:
lantos@danubia.hu
Michael Lantos, a Hungarian and European patent and trademark attorney, has been the managing partner and director of Danubia Patent & Law Office LLC since 1990. He works in patent and trademark litigation, including licence-related counselling and litigation. He is the Minister of Justice in the Professional IP Expert Board of Hungary. He is the current president of LES Hungary and vice president of the Hungarian Trademark Association. His memberships include AIPPI, INTA, FICPI as well as the LIDC.
World Intellectual Property Review September/October 2010
65
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