Submission claims and evidence in trademark proceedings
This is because incomplete evidence or claims filed late cannot be rectified in the appeal proceedings before the courts.
Every day, trademark practice gets stricter and stricter. This means claims and evidence should be submitted early in trademark and opposition proceedings. This issue is more important, because rushed oppositions are often filed on the last day of the opposition period, meaning that important aspects might be missed and subsequently cannot be rectified. Two examples will now be outlined where the court has not accepted late evidence (or claims).
The first case concerns a trademark application for ‘Körmös Diploma’ (‘Nail Diploma’), which is filed in Class 41 and covers education, building, entertainment, sport and cultural activities. In the case before the HIPO, the application was objected to because the term ‘diploma’ is descriptive, referring to an educational certificate, and ‘nail’ is a generic expression.
The applicant had a leading cosmetic enterprise in Hungary and submitted evidence showing its widespread presence. This evidence was submitted to prove acquired distinctiveness.
The HIPO rejected the application because the evidence was insufficient to prove a link between ‘Nail Diploma’ and the applicant in the minds of consumers.
In the appeal proceeding before the Metropolitan Court, the applicant submitted more and stronger evidence to prove acquired distinctiveness. The court rejected the appeal and did not take the newly submitted evidence into account, citing Article 40 paragraph (3) of the trademark law.
The second sentence of this paragraph says that during examination, the office can reject statements or evidence submitted after the application was filed. In the case the evidence filed before the office was too weak to support acquired distinctiveness.
“ANYONE CAN FILE OBSERVATIONS AGAINST A TRADEMARK APPLICATION UNTIL IT IS ACCEPTED, MEANING THAT THEY DO NOT HAVE TO BE FILED BEFORE THE OPPOSITION PERIOD CLOSES.”
The court referred to Article 91, paragraph (4) of the trademark law, which says the court will not take into account the statements, declarations or evidence submitted in the appeal or after filing the appeal that were not considered before the HIPO. The application was finally rejected, although the evidence submitted later must have been sufficient to prove acquired distinctiveness.
While this was a final decision, the route to obtaining protection is not finally closed because the application can be re-filed and, in the repeated proceeding, the proper evidence can be submitted.
The second example concerns a trademark application for ‘MaxLED’ (in Class 9 for lamps) that was opposed by the owner of an earlier trademark, ‘Mag-LED’. The basis of the opposition was the confusing similarity between the marks. The opponent did not specifically refer to the famous nature of the older trademark.
HIPO rejected the opposition, stating that ‘MaxLED’ was sufficiently distinctive and cannot be confused with ‘Mag-LED’ because the pertinent segment of consumers know that ‘max’ is the abbreviation of something very great or at its maximum, and LED is the accepted abbreviation for lamps using light-emitting diodes.
This was a strange reasoning because, based on the same grounds, the office should have rejected the ‘MaxLED’ application owing to its descriptive nature. In the appeal, the opponent filed additional observations stating that because of the applied-for mark’s descriptive nature, it should have been rejected.
According to the trademark law, anyone can file observations against a trademark application until it is accepted, meaning that they do not have to be filed before the opposition period closes. In the aforementioned case, the opponent filed evidence showing the famous nature of the Mag-LED lamps and that his famous trademark deserves a higher degree of protection, thus lowering the standard for proving confusing similarity.
The Metropolitan Court accepted the appeal and rejected the trademark ‘MaxLED’. However, the court pointed out that the observations were not taken into account because of their late submission, and the famous nature was also not taken into account owing to the same ground, but they found the opposed trademark confusingly similar with the older one.
The lesson of these cases underlines the significance of the timely submission of all claims and evidence.
In some cases, when a party has given a clear reason why something was submitted later, the court has accepted such evidence, but this practice has become stricter. As these two examples show, there is an increased risk when one acts late.
