FACTS
The applicant is the owner of a word mark and two word and figurative marks each comprising the term “Használtautó” [meaning: ”second hand car”], listed in Class 35 for advertising, Class 38 for telecommunications services and Class 41 for entertainment services. In addition, he owns an identical domain name. The defendant owns a similar domain name used for advertising cars on the Internet.
The plaintiff sued for trademark infringement and unfair competition. The Metropolitan Court said that with its advertisement, the defendant infringed the plaintiff’s mark and condemned it for trademark infringement. Moreover, the Court said that the suffix “for sale” appearing in the defendant’s advertisements is not sufficient to distinguish it from the plaintiff’s mark. Therefore, the domain name used by the defendant can be confused with the plaintiff’s mark. (As the Court convicted the defendant of trademark infringement, it did not consider the action for unfair competition.)
The defendant appealed to the Metropolitan Court of Appeal, but it was dismissed. The Court agreed with the reasons set out by the Court and added that the defendant’s advertisements, informing the public using the plaintiff’s figurative mark, also constituted unfair competition. Furthermore, the Court stated that although the word element of the device mark is not inherently distinctive, in cancellation proceedings against the plaintiff’s mark it was established that the mark had acquired distinctive character by its intensive use.
The defendant sought a review with the Supreme Court, but that too was denied. The Supreme Court approved the reasons presented by the two lower courts but supplemented the operative part of their judgment by specifying that an infringement was also committed by using the domain name of the plaintiff (Pfv.IV.20.700/2018).
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Interestingly, each instance dealing with the case reported above went further than the previous one, namely:
- The Court condemned the defendant for infringement of the plaintiff’s figurative mark;
- The Court said the defendant’s behavior was also unjust;
- The Supreme Court also convicted the defendant of domain name infringement.
With the judgment of the Supreme Court, the circle of finding the fault of the accused has come full circle.
The Supreme Court’s decision is also helpful because plaintiff’s design mark is questionable from a marketing psychology perspective, namely that it was not in itself distinctive, but it only acquired distinctiveness through use. As the defendant filed a request to cancel the trademark of the plaintiff’s device, and this was rejected, all three instances were correct in convicting the defendant. I mean that this does not change the fact that the word element of the Applicant’s design mark is not inherently distinctive, but results from acquired distinctiveness.
