Court rules there's something fishy in trademark application

The Metropolitan Court has denied an appeal by Mattel Inc against a refusal to grant an application for the mark FISHER-PRICE. The court agreed with an earlier ruling from the Hungarian Patent Office (HPO), which refused to grant Mattel's application for the mark on the basis that it was confusingly similar to two marks already registered for nearly identical goods.

Mattel filed an application on January 23 2004 to register the mark FISHER-PRICE, requesting trademark protection for goods listed in Class 16 of the Nice Classification. In the course of substantial examination the HPO stated that there were already two existing device trademarks (registration numbers 381,575 and 365,524), registered by Fischerwerke Artur Fischer GmbH & Co, that covered nearly the same goods.

The HPO issued an office action (Case M0400316/3) to Mattel. In its response Mattel did not contest similarity of the goods covered by the earlier trademarks to the one it was applying for. It did, however, set out several arguments showing that the trademarks were not confusingly similar and thus were unlikely to mislead consumers.

Mattel subsequently lodged an appeal against the HPO's decision to the Metropolitan Court, which passed an order (Order 1.Pk.22,972/2006/3) confirming the HPO's decision. The refusal was based on Section 4 of the Trademarks Act 1997:

"(1) The following may not be granted trademark protection:
(b) a sign which, due to its identity with or similarity to an earlier trademark or the identity or similarity of the goods or services covered by the trademark, consumers may confuse with the earlier trademark."

This case is a useful demonstration of how Hungarian authorities decide cases of confusing similarity. The main viewpoint appears to be that where there is a combined word mark and a device mark, the word has priority.

In the case at hand the trademark for which Mattel was applying is, in English, FISHER-PRICE, while the registered trademarks, in German, are FISCHER QUALITAT and a big fish design with a special script around it. According to Hungarian rules of grammar, in word compounds the first part is always stressed and has priority - in this case the word 'Fisher' which is identical in pronunciation to the German word 'Fischer'. The court found that the second part of the compound in Mattel's application, 'price', did not make the mark distinctive. Therefore despite the quite different appearances of the existing trademarks and of the mark that Mattel was applying for, the authorities stated that there was a similarity that could potentially deceive consumers and thus rejected the application.

Mattel has the option of lodging a second-instance appeal with the Board of Appeal.

Gabriella Sasvári, SBG & K Patent and Law Office, Budapest