Michael Lantos of Danubia Patent & Law Office assesses the limitations placed on trademarks by personal rights in Hungary

Conflicts between personal rights and trademark rights are relatively rare, so a kind of orientation is required if such problems arise. They have arisen in different forms in Hungary recently, and the Hungarian Intellectual Property Office (HIPO) has issued respective decisions in two cases.

These saw a broader protection awarded to personal rights, and the allegedly conflicting trademarks were invalidated as a result of cancellation proceedings initiated by the persons whose personal rights were allegedly affected.

In both cases, the trademark owners filed respective appeals to the metropolitan court, which is the competent first instance tribunal for all trademark matters in Hungary.

This court has reversed the decisions of HIPO and has taken a much narrower interpretation, drawing limits to the use of personal rights in trademark matters. In one of the two cases, the opponent did not appeal and the decision has become final, while the other case is awaiting a decision from the appeal court. Although the appeal court might reverse the decision of the metropolitan court, this is unlikely to happen.

The legal background for such disputes is provided by Article 5(1)(a) of the Hungarian trademark law (1997), which lists the relative grounds that bar trademark registration: “No trademark protection can be awarded to the designation if it injures other’s earlier personal rights including the rights associated with his/her name or picture,” it says.

This is a regulation that positively lists these prohibitions among the conditions of registrability, and the parts of the law that refer to the rights to oppose or cancel a trademark refer back to this requirement.

A different approach is used in the Community Trademark Regulation, namely the injury of personal rights is not listed among the relative grounds defined in Article 8, but instead among the grounds for cancellation in Article 53(2), in points (a, names) and (b, pictures).

Neither of these points lists any details as to what qualifies as injury of such personal rights, so the corresponding court decisions have significance.

The first case refers to the name of a famous Hungarian breeder of grapes who lived and was active in the middle of the nineteenth century. His name, János Mathiász, was connected to more than 140 kinds of grapes and wines, of which a few are still grown.

The family name Mathiász, with this mode of writing, corresponds to an old version of how the given name Matthew was used, in which the letter ‘a’ is accented, ‘á’, and the word combination ‘sz’ has a pronunciation that corresponds to that of the English ‘s’.

A Hungarian person, who has among other things a large winery including many cellars and produces several kinds of wines, filed a trademark application for the word ‘Matias’, and this was duly registered. In all bottles produced by his winery, the label included the mark ‘Matias’ in addition to the other compulsory designations, including the kind of the wine and the year of the wine. His given name was Mátyás, which is the Hungarian translation of the English name Matthew. He chose ‘Matias’ as his trademark, as it is an old Latin version of his name and he found that it fits his business.

The grand-grandson of the breeder János Mathiász, whose given name was Gábor, filed a cancellation proceeding against the ‘Matias’ trademark, alleging that it illegally uses the fame of his grand-grandfather and deceives consumers as to the origin of the offered wines. Mathiász’s grand-grandson also listed other reasons showing that the choice of this name as a trademark for wines injured the family’s reputation to an illegal extent. He had other grounds for cancellation, but they were found to be insignificant.

In the proceeding before HIPO, the trademark owner admitted that the ancient breeder was a person with high esteem, especially in breeding grapes, however, his trademark was distinctively different and his use was neither deceptive, and did not adversely affect the name of the petitioner, which was different.

HIPO decided in favour of Mathiász’s grand-grandson and cancelled the trademark, stating that the personal rights of the family include the fame acquired by the breeder, which is further cared and maintained by his family. The decision supported the claims of the petitioner, stating that the use of this name would unlawfully take advantage on the fame acquired by the grape breeder.

The trademark owner filed an appeal against this decision, stating that the right of a person to his name is very limited, specifically to the exact way the name is written, because there are many people who share a common name, and even a different single letter provides distinction. Furthermore, in cases of family names, the family name alone protects only really famous historical persons. In other fields, a person is defined by the combination of his family and given name. Reference was also made to the fact that all grape types developed and introduced by Mathiász comprised the full name of the breeder, including his given name, and included an additional name for the species of the grape.

The trademark owner added that his did not shadow or tarnish the fame and goodwill of the breeder, so there is no injury whatsoever. The appeal also referred to a part of the civil law, according to which personal rights can be exercised only in person, and in cases of deceased persons, the rights of the successor are limited to the care of the decent memory of the person.

It was further added that the broad interpretation of similarities and what is distinguishably different are terminologies used in trademark law only, which regulates the behaviour of commercial entities, and the rules of personal rights, especially the right to a name, have it that injury or harm is evaluated based on different standards.

The metropolitan court shared the view of the trademark owner and upheld his mark. The court pointed out that Mathiász’s grand-grandson could not provide any evidence that could support that this use could have had any influence on the memory and values of the famous breeder, János Mathiász.

This is not yet a final decision of the Hungarian courts as the petitioner has appealed, but in the lack of any evidence on the adverse effect of the use of the trademark ‘Matias’ on the memory and fame of his grand-grandfather, it is unlikely that the appeal court will reverse the first instance decision.

The second case is different, in the sense that in a Hungarian city from the middle of the nineteenth century until about the nationalisation of industries by the communist system in 1949, there was a leading leatherware factory in the city producing quality leather gloves. The name of the business and gloves it produced was Hammerli, after the family who owned it. The gloves enjoyed a good reputation, and even after the nationalisation, most people in the city called the factory and the gloves by that name. The factory was later liquidated and ceased operations.

Recently, a new glove enterprise was established in the same city and the owner registered ‘Hammerli’ as a trademark. A member of the Hammerli family, owners of the old factory, initiated a cancellation proceeding against this trademark and alleged that its owner had unlawfully made use of the famous family name, and in its advertisements and marketing tried to give the impression that its business was some way affiliated with the old Hammerli enterprise. The petitioner is a person who has no business in the glove industry but wished to keep only the memory of the Hammerli family clear and apart from the activities of this new business.

HIPO again accepted the grounds of the petition and cancelled the trademark. The trademark owner filed an appeal to the metropolitan court, arguing that the petitioner was not a commercial entity and not in the business, and that its use of the Hammerli name did not cause harm to the Hammerli family.

The metropolitan court also reversed this decision and maintained the trademark. The ground of the decision was that the operation of a business cannot influence the memory of a business that has not been active for decades.

These cases were different in several respects, namely that one involved a living person who had the right to protect his family’s name, while the other featured a person who was not in business and whose name had not been used in the course of trade for a considerable period of time.

In this case, the petitioner did not appeal and the decision has become final. It is unclear whether this decision would have been upheld if appealed, because the important component was that a substantial portion of consumers still remember and value the Hammerli name. Furthermore, the new owner has no basis or right to advertise and market its business as if it was related to Hammerli.

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