The test for determining trademarks with a reputation comprises a number of factors, not only whether the mark is widely recognized.
This ruling was made by the Polish Supreme Court in a dispute between two manufacturers of herbal medicines, and related to the situation in which the rights of one of these companies to the names of its well-known products, which relate to the Latin name of the active substance they contain, were allegedly infringed when a second company introduced products with similar names onto the market.
The Supreme Court ruled that although broad recognition of a mark is a factor in determination of whether this mark has reputation or not, it is not the only factor that should be taken into account when appraising reputation in a given case.
Other factors must be taken into account, such as the mark's distinguishing power and its similarity to the markings actually used (rather than just registered) by competitors.
It also ruled that pharmaceutical manufacturers cannot legally bar others from using the same Latin stems in their product names.
Law: Ruling of the Polish Supreme Court in case no. II CSK 541/08.
The Act of 30 June 2000 - Industrial Property Law (Dz. U. 2003 Nr 119, Item 1117, as amended)
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The original publication date for this article was 10/03/2009.