BIO-MAGNUM mark infringed by descriptive Bio-Magnesium name

Belgium

In Bio-Fyt Pharma v Pharma Nord (Case AR 11.020/00), the Brussels Commercial Court has ruled that the defendant's use of the descriptive name Bio-Magnesium for its food supplements infringed the plaintiff's BIO-MAGNUM mark for similar goods. The court held that BIO-MAGNUM is sufficiently distinctive to warrant protection.

Bio-Fyt Pharma, a Belgian company, owns a registration for the mark BIO-MAGNUM for a food supplement that includes magnesium. The BIO-MAGNUM-marked product is sold exclusively in pharmacies and can only be obtained under prescription. Pharma Nord, a competitor of Bio-Fyt, sells, via the same distribution channels, a similar magnesium supplement under the name Bio-Magnesium. Bio-Fyt commenced legal action on the grounds that the Bio-Magnesium product infringed its BIO-MAGNUM trademark.

The Brussels Commercial Court first had to deal with the question of whether BIO-MAGNUM had sufficient distinctive character. The court held that the term 'bio-magnum' per se was not particularly distinctive as it was suggestive of products containing a high level of magnesium. Nevertheless, the court accepted that, due to evidence highlighting the product's market share and Bio-Fyt's advertising efforts, the mark BIO-MAGNUM had gained distinctive character and its scope for protection had broadened.

The court next considered the issue of confusing similarity. It held that certain dominant and distinctive elements of the BIO-MAGNUM trademark (in particular the prefix and suffix) were to be found in Pharma Nord's sign. The court reasoned that small differences, such as differences in the use of colours, were of no importance in the assessment of the overall risk of confusion. It concluded that the Bio-Magnesium name did create a risk of confusion with the BIO-MAGNUM mark. The court stated that this risk was increased by the fact that doctors tend to have poor handwriting and often use abbreviations on prescriptions. This might lead pharmacists into giving consumers Bio-Magnesium products instead of the BIO-MAGNUM-marked supplement.

As part of its defence, Pharma Nord had requested the intervention in the proceedings of French company Lehning Enterprise. Lehning owns the Benelux trademark BIOMAG, which was registered prior to Bio-Fyt's BIO-MAGNUM mark.

Pharma Nord and Lehning claimed that BIO-MAGNUM was invalid because of its resemblance to the senior BIOMAG trademark. The court, however, rejected this claim stating that the products sold under the BIOMAG mark were homeopathic products with a very low dose of magnesium. They were also aimed at a different consumer group. It concluded that the goods sold under the BIO-MAGNUM trademark were not identical or similar to those sold under the BIOMAG mark.

For similar reasons, the court also rejected Lehning's claim that the BIO-MAGNUM mark and Bio-Magnesium name infringed its BIOMAG trademark.

Thus, the court issued an order preventing Pharma Nord from selling its Bio-Magnesium products and awarded damages in favour of Bio-Fyt.

An appeal lodged by Pharma Nord and Lehning is pending.

Michel Draps, Altius, Belgium

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