Brussels, 27/01/2012 (Agence Europe) - Polish company Viaguara S.A. will not be able to register the sign “Viaguara” as a Community trade mark for alcoholic and energy drinks. By using a sign that is similar to that of the already existing “Viagra” sign, it could take unfair advantage of the distinctive character or repute of that trade mark.
With this ruling handed down in Case T-332/10 on Wednesday 25 January, the General Court of the EU rejected the appeal of the Polish company against the refusal of the Office for Harmonisation in the Internal Market (OHIM) to register the word sign “Viaguara” (applied for in 2005) following the opposition to the application by the American company Pfizer Inc., proprietor of the trade mark “Viagra”.
In its ruling, the Court states that the reputation extends not only to users of the medicine to treat masculine erectile dysfunction but the population as a whole. It points to the strong visual similarity between the signs “Viaguara” and “Viagra” resulting from same stem “viag”, reinforced by the final part “ra”. It also finds that the signs are phonetically very similar. It goes on to observe that, even though a direct link cannot be established between the goods covered by the marks at issue, an association with the earlier mark is still possible, having regard to the high degree of similarity between the signs and to the huge reputation acquired by the earlier mark which extends beyond the public concerned by the goods for which it has been registered. Therefore, even if the respective publics targeted by the marks at issue do not completely overlap, as the goods concerned are different, a connection between the marks is likely to be made. Consumers may associate the sign “Viaguara” with qualities and characteristics of the sign “Viagra” and buy Viaguara products thinking that they will find “similar qualities, such as an increase in libido, owing to the transfer of positive associations projected by the image of the earlier mark”. The General Court concludes that Viaguara S.A., by using a mark similar to the earlier mark, is “attempting to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige”. It is attempting, then, “to promote its own products” by exploiting the marketing effort expended by Pfizer in order to create and maintain the Viagra image “without paying any financial compensation”. (FG/transl.rt)