A huge reputation

B9 10707. Gerecht EU, 25 januari, zaak T‑332/10. Viaguara S.A. tegen OHIM/Pfizer.

Merkenrecht. Bekende merken. Kielzogvaren. EU-oppositie o.g.v. Pfizers oudere bekende woordmerk VIAGRA (voor Viagra) tegen de inschrijving van het merk VIAGURA voor dranken (energydrinks). De oppositie wordt toegewezen. In de woorden van het perscommuniqué van het Gerecht zelf: The sign "VIAGUARA" cannot be registered as a Community trade mark for drinks. Use of that sign is likely to take unfair advantage of the distinctive character or repute of the trade mark VIAGRA.

The General Court observes that, even though a direct link cannot be established between the goods covered by the marks at issue, which are dissimilar, 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. (…) Lastly, the General Court rules on the condition relating to the risk of an unfair advantage being taken of the distinctive character or the repute of the mark Viagra. The Court finds in that regard that even if the non-alcoholic drinks concerned do not actually have the same benefits as a drug to treat erectile dysfunction, the consumer will be inclined to buy them thinking that he 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 observes in that context that, although the product covered by the mark Viagra is a drug used to treat erectile dysfunction and is sold only on prescription, the fact remains that it does not necessarily refer to the treatment of a serious illness, but to an image of vitality and power, since it enables persons affected by erectile dysfunction to improve their sex life and quality of life and that the association with such an image is not incompatible with the "seriousness" which is intrinsic to medicinal products. Since the drug concerned is also used "recreationally" by young persons, the General Court states that such an image could be transferred to non-medicinal products, and in particular, the alcoholic drinks of the mark applied for, of a different nature, but consumed when going out or at parties.

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, 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. Therefore, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of the mark Viagra.

Lees het arrest hier. Persbericht hier.