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VIAGUARA, a stimulated drink, will ride on the coat-tails of the well-known trademark VIAGRA

VIAGUARA, a stimulated drink, will ride on the coat-tails of the well-known trademark VIAGRA

The trademark VIAGUARA infringes the drug VIAGRA. The trademark VIAGUARA is meant for alcoholic beverages and energy drinks. The trademarks were too similar to coexist. Furthermore, they both are supposed to have a stimulating effect on mind and body. VIAGRA is a prescription drug that treats erectile dysfunction in men. Consumers may expect the same quality when taking the VIAGUARA drink.  

The Polish company Viaguara SA produces and distributes alcoholic beverages as well as energy drinks under the name VIAGUARA. The drink includes Guarana fruit which is known for its stimulating effect. This Brazilian fruit, which is as large as a coffee bean, contains twice as much caffeine as the regular coffee bean.

In 2005, the company Viaguara applied for the trademark VIAGUARA for alcoholic and non-alcoholic drinks in the European trade mark register. The pharmaceutical company Pfizer opposed this trademark based on their brand VIAGRA. VIAGRA is a drug with the active ingredient Sildenafil, which is prescribed for erectile dysfunction in men. The trademark VIAGRA has gained exceptionally strong trademark rights due to extensive media attention.

A number of rulings followed where the Chamber of Opposition and the Chamber of Appeal judged differently. The company Viaguara SA went to the General Court. This Court ruled in favour of Pfizer.

They confirmed that the trademark VIAGRA may be considered as a well- known trademark in a substantial part of the European Union. The attention of the consumer (medical professionals and the patients) will be considered on a higher level when it concerned the comparison of  pharmaceutical trademarks, and in particularly medicines that are on prescription. This should reduce the chance of confusion between corresponding trademark names when compared to consumer goods. The reputation of the VIAGRA trademark  is not only limited to the medical specialists and its users but it also extends to the general population. Therefore the mark VIAGRA enjoys a larger scope of protection.

The Court ruled that the trademarks VIAGUARA and VIAGRA are very similar, both in pronunciation and visually. The trademarks have no conceptual meaning (so that aspect is omitted). At first glance, the products are dissimilar but after closer examination the Court believes that there are still enough similarities between VIAGRA and VIAGUARA. Therefore a link can be made between the two trademarks. VIAGUARA is in fact intended for an alcoholic drink or for an energy drink that stimulate the body and mind. The consumer shall purchase the product with the assumption that VIAGUARA has certain qualities which they would expect from VIAGRA, such as a libido-increasing effect. The Court considers that VIAGRA is not meant for serious disease, but merely stands for vitality, energy and strength. The drug Viagra ensures that the quality of life will increase, specifically a better sex life. Since VIAGRA is also used by young people in the night life there is a certain similarity between the use of VIAGUARA that is also consumed by young people in the night life. With respect to the aforementioned reason and  (i) the fact that the trademarks are similar and (ii) VIAGRA is a well-known trademark, confusion is to be feared.

Subsequently, the Court stated that Viaguara SA takes unfair advantage through the use of their trademark VIAGUARA. VIAGUARA profits from the reputation of the mark VIAGRA, this is known as coat tail riding. VIAGUARA benefits from the attraction, the reputation and prestige of VIAGRA without paying any financial compensation to Pfizer.

All this resulted in the rejection of the application of the trademark registration of VIAGUARA  by the European Trademark Office. The next step for Pfizer would be to go to an European Court to enforce a prohibition on the use of VIAGUARA. The energy drink VIAGUARA is still displayed and sold on the website of Viaguara SA. In 2009 and 2010 the Courts in Bern (Switzerland) and Munich (Germany) ruled on the trademarks VIAGRA vs. VIAGUARA vodka. In both cases it was similarly judged that the trademark VIAGUARA benefits from the reputation of VIAGRA.
 

pharma

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IP Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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