Hungarian applicant filed the combination word mark BEER, BURGER, BARBECUE FESTIVAL in Classes 32 (beer), 41 (festivals) and 43 (catering and similar services).
The Hungarian Intellectual Property Office (HIPO) rejected the application, holding that it was descriptive. It referred to the European Court of Justice's (ECJ's) Biomild judgment (C-265/00), which held that word combinations which comprise the juxtaposition of several non-distinctive elements remain descriptive and cannot be considered unusual.
The applicant requested a review by the Metropolitan Tribunal, which was rejected. The tribunal agreed with the HIPO in respect of the lack of distinctiveness of the word combination for which the applicant had applied. Moreover, it held that the evidence that the applicant had filed was irrelevant in respect of distinctiveness. It did not prove acquired distinctiveness (ie, intensive use extended in time and space).
The applicant filed an appeal, but the Metropolitan Court of Appeal approved the tribunal's decision (8 Pkf 25 543/2018).
Distinctiveness is a basic requirement of the EU Trademark Directive (2015/2436/EU) and the EU Trademark Regulation (2017/1001). In the 18th century, long before the implementation of these rules, distinctiveness was also a key condition for trademark protection under US law and the laws of several European countries.
The situation is slightly different where trademark protection is required for a word combination. In this case, the HIPO referred to the ECJ's Biomild judgment as a precedent, which found that the addition of non-distinctive word elements cannot result in a distinctive sign. The same idea can be found in the ECJ's Postkantoor (post office) judgment (C-383/99).
A word combination that comprises terms which are not distinctive can be protected as a mark only if a surprising, unexpected sign is created. An example of such a linguistic effect can be found in the ECJ's Baby Dry judgment (C-383/74), which was quoted without reference in the HIPO's decision in this case. It is clear that it is not easy to create such a word composition.
It is also possible to acquire protection for a non-distinctive word combination if it has acquired a secondary meaning through successful use and publicity. In this case, the evidence filed in this respect was examined by the courts in both instances and found to be unconvincing.
Alexander Vida
