Taking Unfair Advantage of Reputation of Viagra
According to the General Court of the European Union, the sign VIAGUARA cannot be registered as a Community trade mark for drinks. The Court has ruled that use of that sign is likely to take unfair advantage of the distinctive character or repute of the trade mark VIAGRA, owned by Pfizer Inc.
In October 2005 the Polish company Viaguara S.A. applied to OHIM for registration of the word VIAGUARA for energy drinks and alcoholic drinks. Pfizer’s earlier Community trade mark VIAGRA (a drug to treat erectile dysfunction) formed the basis of the opposition against that application. OHIM refused to register the VIAGUARA mark and the opposition was successful.
Viaguara S.A. subsequently applied to the General Court to have that decision annulled and in its judgment, the General Court has dismissed the action and upheld the decision of OHIM. The General Court held that OHIM was correct to find that the reputation of VIAGRA, which has been prescribed to millions of men since its introduction in 1998, extends not only to consumers of the drugs concerned, but also to the general population.
With regard to the similarity of the marks, the Court noted the well-established principle that consumers generally pay more attention to the initial part of the word. Therefore, the prefix ‘VIAG’ was sufficient to find that there was a strong visual similarity which was reinforced by the common suffix ‘RA’. Likewise, the marks were held to be phonetically very similar and there was nothing to distinguish the signs conceptually. Overall, the marks were found to be very similar.
The Court held that, even though a direct link could not be established between the goods which were altogether dissimilar, an association with the earlier mark was still possible due to the high degree of similarity between the signs and to the huge reputation acquired by the earlier mark. Therefore, a connection between the marks was likely to be made.
The General Court said the VIAGUARA mark would take unfair advantage of the distinctive character or the repute of VIAGRA. The Court found that even if the non-alcoholic drinks concerned did not actually have the same benefits as a drug to treat erectile dysfunction, consumers may be inclined to buy them thinking that they would find similar qualities, such as an increase in libido, owing to the transfer of positive associations projected by the image of the earlier mark. Viaguara S.A. had itself claimed that the alcoholic drinks had other fortifying and stimulating effects on the mind and the body, as well as properties which were beneficial for health, similar to a drug.
The Court concluded that Viaguara S.A., by using the VIAGUARA mark, was attempting to ride on the coat-tails of the VIAGRA mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation, the marketing effort expended by Pfizer in order to create and maintain its image and to promote its own products. Therefore, the advantage resulting from such use was considered to be an advantage that would be unfairly taken of the distinctive character or repute of the mark VIAGRA.
Viaguara S.A. have two months to bring an appeal against the decision before the CJEU on points of law and it will be interesting to see if they decide to challenge the decision further.