On 25 January 2012, the General Court of the European Union (the “General Court”) upheld Pfizer’s opposition against the registration of the sign ‘VIAGUARA’ as a Community Trade Mark (“CTM”) on the basis of the strong reputation of Pfizer’s own ‘VIAGRA’ trade mark.
On 3 October 2005, the Polish company Viaguara S.A. filed an application to register the sign ‘VIAGUARA’ as a CTM for energy drinks and alcoholic beverages. Pfizer opposed the registration of this sign on 7 February 2007 on the basis of its well known earlier registered trade marks for ‘VIAGRA’.
The opposition division of the Office for the Harmonisation of the Internal Market (“OHIM”) initially rejected Pfizer’s opposition. On appeal, the Board of Appeal of OHIM granted the opposition on the basis of Article 8 (5) of Regulation 207/2009 on the Community trade mark (the “CTM Regulation”). Article 8 (5) of the CTM Regulation permits the holder of an earlier trade mark with a reputation in the Community (or in a Member State) to oppose the registration of an identical or similar sign, even for goods or services which are not similar to those for which the earlier trade mark is registered. In particular, the trade mark holder can object to the registration of a similar sign which, without due cause, takes unfair advantage of the distinctive character or the repute of the earlier mark.
Upon further appeal by Viaguara S.A., the General Court upheld the decision of the OHIM.
First, the General Court found that the signs at dispute, ‘VIAGUARA’ and ‘VIAGRA’ were similar.
Second, even though the General Court held that there is no direct link between the goods covered by the marks at issue, it found a sufficient connection based on the huge reputation of the mark VIAGRA and the high degree of similarity between the signs.
Third, the General Court had to determine whether the use of the sign ‘VIAGUARA’ takes unfair advantage of the repute of the earlier mark. The General Court held that it is necessary to carry out a global assessment which takes into account all the relevant elements of the case at hand. In this assessment, the earlier mark is more likely to be affected if it possesses a high level of distinctiveness and/or a stronger reputation.
In this regard, the General Court observed that Pfizer’s Viagra product refers to an image of vitality and power which could be transferred to non-medical products, including the goods for which Viaguara S.A. had sought to register the trade mark.
Accordingly, the General Court concluded that Viaguara S.A., “by using a mark similar to Pfizer’s trade mark, is attempting to ride on the coattails of that 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. This was held to amount to an unfair advantage taken of the distinctive character or the repute of the mark VIAGRA.
