1 August 2011TrademarksJudit Lantos

Distinctive or not distinctive? Food and drink brands in Hungary

There have been a number of recent cases in Hungary where the question of distinctive character was the issue in a refusal on absolute grounds; several of these cases pertain to food and drink brands.

Ce’Real for chocolate—granted

An international word mark called ‘Ce’Real’ for class 30 (confectionery, chocolate and chocolate products, pastries, ice-cream and preparations for making the aforementioned goods) designating Hungary was finally refused by the Hungarian Intellectual Property Office due to the lack of distinctive character.

The office referred to the decision of the Court of First Instance in the Companyline case, as well as to the observations declared in the Biomild case, and summarised that as a general rule, the mere combination of elements, each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics, even if the combination creates a neologism.

Due to this logic, the office explained that the expression ‘cereal’ has a descriptive meaning in Hungarian, which is known by the majority of the relevant consumers.

The office refused the applicant’s arguments intended to emphasise the distinctive character of the apostrophe between the word elements ‘Ce’ and ‘Real’, and ignored the reference to the meaning of these words in French and Italian, which could have caused consumers to associate it with something other than cereal products.

Due to these findings, the office came to the conclusion that after having examined the overall impression of the designation Ce’Real, trademark protection could not be granted, due to Section 2 (2) (a) of Trademark Act, as it is devoid of any distinctive character and Hungarian consumers might interpret the mark as only describing certain characteristics of the goods.

The applicant filed a request for review against the decision of the office at the competent court, and was very glad to learn that the Metropolitan Court reversed the decision of the office and stated that the mark Ce’Real could be registered in Hungary.

The court did not agree with the office’s reasoning, and noted that even though there is a chance that consumers, while observing the mark, would associate it with cereals and products made from cereals (especially from the Latin word cerealia), due to the fact that both the propagation and distribution of healthy living and healthy food has been spreading quickly in the last few years.

However, the neologism Ce’Real can be considered as a significant novelty, due to the playful combination—and separation—of the elements of the word.

As other participants in the relevant market do not use the word Ce’Real in this given form—which constitutes a deviation from English grammar—their business activities wouldn’t be restricted by granting trademark protection to the designation Ce’Real, as they can describe their products with the words cereal and cereals freely.

The court also noted that even in search programmes such as Google, the high number of hits—as emphasised in the office’s decision— referred to the word cereal, and not to the word Ce’Real written in this special form.

The court found that the apostrophe following the element ‘Ce’ and the letter ‘R’ written with a capital in the middle of the mark provided the designation with a distinctive character. Moreover, although the word cereal is commonly known, the mark Ce’Real would be inadequate for the description of the goods concerned.

We are of the opinion that a substantial reason for registering the trademark could have been the fact that the class of goods (confectionery, chocolate and chocolate products, pastries, icecream) of the trademark is not for cereals.

Naturfresh: granted, but not granted

Usually, the practice of the Metropolitan Court (and the Appeal Court when an appeal is submitted) is more liberal than that of the office, which was the case in the Ce’Real issue.

However, before coming to the conclusion that the Hungarian Metropolitan Court follows a very permissive practice, a different case shows the Metropolitan Court strictly evaluating the distinctive character of a trademark, and interestingly the decision rejecting trademark protection was brought by the same senate and same judges as in the Ce’Real case.

"The court found that the mark cannot be considered a significant novelty, and average consumers would not apprehend the playful combination of the words."

The Metropolitan Court has maintained the decision issued by the office and refused to grant trademark protection to the Hungarian part of the international word mark ‘Naturfresh’ for the products listed in class 29 (salads, preserves, ready-to-serve dishes and foods prepared from fish) on the following grounds:

With regard to Section 2 (2) (a) of the Trademark Act, the court entirely agreed with the reasoning of the office’s refusal.

According to the court, the word Naturfresh is devoid of any distinctive character—as the applicant tried to argue as a neologism formed from the German word ‘Natur’ and the English word ‘fresh’—because the word natur is used in the Hungarian language (in the accentuated form natúr), and fresh is a commonly known word also for non-preserved products in Hungary. Therefore, Hungarian consumers may interpret the mark as describing characteristics of the goods.

In addition, the court found that the mark cannot be considered as a significant novelty, and average consumers would not apprehend the playful combination of the words.

The court agreed with the office on the lack of evidence regarding the acquired distinctiveness (Section 2 (3) of the Trademark Act) of the mark and found that the single invoice provided by the applicant couldn’t be considered as appropriate proof, also due to the fact that the value and quantity of the products indicated in the invoice is low. Moreover, the products on the invoice were indicated under the mark ‘Naturfres’, not Naturfresh.

Finally, the court partially agreed with the office’s reasoning based on Section 3(1) b) and established that the mark may be deceptive due to its possible interpretation (natural and fresh) with regard to preserves and ready-toserve dishes and foods prepared from fish, but would presumably not mislead consumers with respect to salads.

According to Section 3(1) b) of the Trademark Act, a mark may not enjoy trademark protection if it can deceive consumers with regard to the type, quality, geographical origin or other characteristics of the goods or services. The strict practice of the office and the Metropolitan Court in the Naturfresh word mark case would be more permissive were the mark a device trademark combined with the word element, where the device element itself has sufficient distinctive character.

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