Council disregards T-Mobile complaint over domain name confusion
T-Mobile Hungary has protested against the registration of four domain names with the prefix 't-': 't-akcio.hu', 't-elefon.hu', 't-lap.hu' and 't-udakozo.hu'. T-Mobile claims that the prefix makes the domain names confusingly resemble its trademark T-MOBILE. This complaint follows a decision by the Advisory Body of the Council of Internet Service Providers earlier this year to allow registration of the domain names 't-klub.hu' and 't-pont.hu', despite complaints from T-Mobile.
According to the provisions of the licence agreement between T-Mobile International and T-Mobile Hungary, the trademark T-MOBILE is registered and protected by German law. T-Mobile argued that customers expect that a word preceded by 't-' will lead to services provided by T-Mobile. The domain names 't-klub.hu' and 't-pont.hu' thus gain extra and unfair marketing and advertising value from this association, which violates the interests of the trademark owner. T-Mobile also referred to provisions of the Hungarian Act on the Prohibition of Unfair and Restrictive Market Practices (57/1996), which defines the legal protection of expressions that can be recognized as belonging to a rival provider.
The council refused this argument, because the Hungarian Act on the Protection of Trademark and Geographical Product Markings (11/1997) does not contain provisions regarding the protection of partial names or word groups. According to Section 1(2) of the Hungarian Trademark Act, a trademark may consist of any of the following signs:
- a word or combination of words, including personal names and slogans;
- letters or numerals;
- designs or graphics;
- flat or three-dimensional figures, including the shape of the goods or packaging;
- a colour (or combination of colours), a light signal or a hologram;
- a sound; or
- a combination of any of the above.
As a result of this earlier decision, the council declared that T-Mobile does not have trademark protection regarding the domain names 't-akcio.hu', 't-elefon.hu', 't-lap.hu', and 't-udakozo.hu', and thus permitted the registration of the four names. It is believed that T-Mobile is now working with the individual domain name registrants to resolve the issue.
David Imre and Mark Laszlo Beregszaszi, Komáromi és Eros Ügyvédi Iroda Squire Sanders & Dempsey LLP, Budapest
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