Common and generic names of an informational nature may become distinctive when specific elements of the names are combined in a unique way, which means that they can become the dominant element of a trademark.
This was the conclusion drawn by the Polish Supreme Court in its judgment dated 22 January 2010 in Case No. V CSK 192/09.
The producer of a dietary supplement sold under the name “MGB6” filed a civil action against the producer of a similar product sold as “Mg+B6,” with the addition of the words “magnesium” and “vitamin,” alleging unfair competition.
The case was considered by the Supreme Court pursuant to a cassation appeal filed by the defendant. The court denied the cassation appeal, thus affirming the finding of a violation of the plaintiff’s rights, but the court raised a number of fundamental issues in the justification for the order.
It should be pointed out in the context of this ruling that under the applicable regulations, the Polish Patent Office will not grant trademark protection to names that lack sufficient distinguishing characteristics. This has to do, for example, with names that are made up only of elements that may be used to refer to the type of product, its composition or use, or are regarded generically under establishing commercial practice.
The facts in this case, however, did not involve a single use of generic names, but a combination, which the plaintiff was the first to use. The fact that the name of the plaintiff’s product was created by combining the symbol for the element magnesium with the symbol for vitamin B6 does not mean that it is just a generic name that may be used by anyone on the market.
The Supreme Court stressed the specific nature of the market segment in which magnesium preparations are sold, where the same or a very similar product may become more attractive from the customer’s point of view thanks to a specific name or advertisement of the product or its packaging. In that situation, introduction of a new product onto the market requires great caution, because there is a risk that very similar packaging and naming of the product may result in misleading consumers, thus stealing them away from another producer.
According to the justification for the judgment, when assessing the similarity of the product names, the court placed great importance on phonetic aspects, and found that distinguishing the two products on this basis was essentially impossible. This argument took on greater weight from the fact that the plaintiff’s product was advertised on the radio, increasing the risk of confusion even if the packaging of the products looked different.