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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 quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?
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