Leading pharmaceutical company Pfizer overturned the trademark for a range of alcoholic drinks at the General Court of the European Union this week, after citing confusing similarities to the brand of its anti-impotence drug, Viagra. The defendant in the case, Viaguara SA, produces a line of tonics of the same name, all of which contain guarana: a berry extract from a South American plant that alternative-therapy enthusiasts claim has positive effects on energy levels and wellbeing.
In the Court’s opinion, the most crucial factor that ruled the Viaguara mark out of the running was the product’s intended placement in the health-drinks market. For the Court, this created a possibility that the consumer would purchase the drink ‘thinking that he will find similar qualities … owing to the transfer of positive associations projected by the image of the earlier mark. Moreover, as regards the alcoholic drinks produced by Viaguara SA containing guarana, it should be noted that the applicant has itself claimed that they have other fortifying and stimulating effects on the mind and the body, as well as properties which are beneficial for health, similar to a drug’.
So, as well as creating unacceptable confusion, those medical connotations were pitched in an opportunistic manner. This tactic was severely criticised in the Court’s announcement of its ruling, in which it said that, by using a mark similar to that of Pfizer’s well-known product, Viaguara SA was ‘attempting to ride on [Viagra’s] coat tails 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 the proprietor of that mark in order to create and maintain its image, to promote its own products.’
As such, the Court concluded, any commercial benefit that the drinks line had enjoyed from its brand ‘must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of the mark Viagra’.
Kilburn & Strode associate Ryan Pixton told NewLegal Review: ‘This case is a good reminder that for an opposition to succeed based on the reputation of the earlier mark, it is not enough that the marks are similar. Nor is it sufficient that the earlier mark is called to mind. The Court was satisfied that the use of the mark Viaguara would take unfair advantage of the repute of the Viagra mark.
‘In this regard,’ he added, ‘the fact that Viaguara’s drinks were promoted as having health benefits assisted Pfizer’s case. The Court found that there was a link between the image of stimulation and vitality projected by Viaguara’s beverages and the positive connotations of using Pfizer’s medical product. As a result, the Court found that the Viaguara mark was deriving an unfair commercial benefit from an association with the image and repute of the earlier mark.’
Ryan Pixton acts for clients in relation to a wide range of trademark matters, and also advises on domain names and registered designs
For previous NewLegal Review coverage of efforts to protect Viagra-related IP, click here and here
General Court of the European Union detects deliberate confusion in alcoholic drink line’s bid to benefit from phonetic association with popular drug