Legal consequences of past use of a non-registered mark

In two recent Hungarian landmark cases the actual earlier uses of respective non-registered marks have proved to be key components before the courts.

According to Article 8 (5) of the Community Trade Mark Regulation (CTMR) in an opposition proceeding based on an earlier trademark, the opposed mark shall not be registered where it is identical with, or similar to the earlier trademark, where this trademark has a reputation in the Community and where the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

In both cases respective opposition proceedings were launched against fairly recent trademark applications, where the applicants had actually used their marks years before the filing dates of their corresponding marks.

The opponents had famous trademarks with earlier registration dates in different classes of goods. The key question which had to be decided by the court lay in whether the actual non-registered earlier use was with or without due cause and whether that use had any adverse effect on the fame of the opponent’s trademarks.

"The metropolitan tribunal clearly stated that if a mark has not been actually used for more than five years, the fact alone constitutes a sufficient basis for cancellation."

In the first case, the applicant stated and proved that its opposed mark has been continuously and intensively used for 14 years in the relevant market for goods that were different from the opponent’s goods.

The applicant also proved that he was once the proprietor of a word trademark registration identical to the opposed mark that had expired because of the lack of renewal. Also, he was the owner of a further device trademark also containing the disputed word element.

The case went up to the Supreme Court, which finally decided in favour of the applicant, finding that the goods were different and that the earlier owner had not opposed the later trademarks. The Supreme Court stated that since the applicant was using his mark, this use should be considered as use with due cause. In this decision the different nature of the goods and the passive behaviour of the opponent through 14 years was also taken into account.

In the second case, the applicant company stated that the opposed mark had been used by its predecessor company without registration for decades. Although the applicant was able to present some evidence with regard to the use of the same mark between 1989 and 1999, he couldn’t prove any later use.

In the light of this, as the earlier actual use referred to by the applicant was suspended for more than an uninterrupted period of five years (namely for almost 15 years), the Metropolitan Tribunal could not accept the legal relevance of such earlier actual use, therefore the trademark application was rejected.

The Metropolitan Tribunal clearly stated that if a mark has not been actually used for more than five years, this fact alone constitutes a sufficient basis for cancellation. In the present case the proven non-registered earlier use constituted a much weaker right and had no effect after an interval of more than five years. The legal consequences of non-use must be applied also for non-registered trademarks.

Therefore an applicant is expected to be able to prove actual use of the mark at least going back five years from the date of the opposition, if he relies on his actual earlier use as a circumstance under which he could be exempted from the legal consequences of an opposition. Use prior to that period has no legal relevance.

The curiosity of this second case was that the Hungarian Intellectual Property Office first rejected the opposition by referring to the aforementioned Supreme Court decision, as according to the office the Supreme Court stated that if the applicant had actually been using his mark earlier then it was a use with due cause.

The tribunal accepted the opponent’s counter-arguments that each case had to be evaluated in its entirety and that the office misinterpreted the Supreme Court’s decision by taking only part of it and overlooking the long passive period after the past use. A past use can be relevant only if it is uninterrupted.