In Viaguara SA v Office for Harmonisation in the Internal Market The General Court summarised the requirements of Article 8(5) (OHIM) (Case T-332/10, January 25 2012), the General Court has rejected an appeal against the First Board of Appeal’s decision to refuse a Community trademark (CTM) application for a mark • the marks had to be identical or similar; • the earlier mark had to have a reputation; and In October 2005 Viaguara S.A, a Polish company, applied to • there must be a risk that use of the mark applied for register the word mark VIAGUARA for the following goods in would, without due cause, be detrimental to, or take unfair Classes 32 and 33 of the Nice Classification: advantage of, the distinctiveness or repute of the earlier • Class 32 - “Still and sparkling mineral water and other non- alcoholic drinks, fruit drinks and juices, syrups and other The court also highlighted that the public must perceive a commercial connection between the marks and that the level • Class 33 - “Alcoholic drinks, liqueurs, spirits, wines”.
of similarity between the marks could help to establish such a connection, even if the public did not confuse them. The court In February 2007 Pfizer Inc, owner of an earlier CTM registration reiterated that all the circumstances must be examined when for VIAGRA for pharmaceutical and veterinary products in Class considering similarity, including the type of goods, the level of 5, opposed the application on the basis of Articles 8(1)(b) and proximity or difference between the goods, the extent of the 8(5) of the Community Trademark Regulation (207/2009). The earlier mark’s reputation, its distinctiveness (whether inherent Opposition Division of OHIM rejected the opposition in February or acquired through use) and the likelihood of confusion. Finally, 2009. Pfizer appealed to OHIM’s First Board of Appeal.
the court noted that, in order to bring an opposition on the basis of Article 8 (5), the owner of the earlier trademark did not have to In May 2010 the Board of Appeal overturned the Opposition demonstrate that any actual detriment had been caused to the Division’s decision. While it agreed that the opposition based on earlier mark, but that there was a real risk that this might happen Article 8(1)(b) should fail, as there was no likelihood of confusion between the respective goods, it accepted the opposition based The court further stated that, to have a reputation, a mark must be known to a significant part of the relevant public. • VIAGUARA and VIAGRA were very similar marks, so the Unsurprisingly, it was not contested that, throughout the public would perceive a commercial connection between European Union, VIAGRA had a considerable reputation as a drug for the treatment of impotence, nor that VIAGRA had • throughout the European Union, VIAGRA had acquired a reputation with its users as well as the general public. an undeniable reputation as a drug for the treatment of Therefore, the court held that the second condition of Article 8(5) • there was a risk that the use of VIAGUARA would, without Taking the visual appearance of the marks first, and reflecting due cause, take unfair advantage of the distinctive character the board’s analysis, the court recognised that all of the letters in VIAGRA were contained in VIAGUARA, the first four letters also being in the same order. The only difference between the Viaguara appealed to the General Court.
marks was the extra ‘U’ and ‘A’ in VIAGUARA. The court did not consider that this was significant, as a consumer would Before the court, Pfizer challenged the admissibility of Annexes pay most attention to the first part of the mark, which in this A6 to A8 in Viaguara’s evidence, since it was the first time that case was identical. Viaguara sought to challenge the court in such documents had been produced. The General Court agreed the hearing by filing evidence of numerous other trademarks and declared them inadmissible. Pfizer conceded its objections registered with the prefix ‘via’, but the court considered such to Annex A7 during the hearing, because it had been included in some form within Viaguara’s submissions to the Board of Viaguara relied on a single ground of appeal, alleging violation of Article 8(5) of the regulation. In its view, the board had relied solely upon the similarity between the marks to come to its decision. Viaguara alleged that the goods were dissimilar and, in its view, the marks were not very similar, so the public would not assume that the marks were connected.
The court then examined the phonetic similarity between the The board had again relied on an injunction granted by the marks. It acknowledged that VIAGRA would be pronounced UK High Court in respect of VIAGRENE, which was registered ‘via-gra’ or ‘vi-a-gra’ and that VIAGUARA would be pronounced for drinks containing plant extracts and conveyed messages ‘via-gua-ra’, ‘vi-a-gua-ra’ or ‘vi-agu-a-ra’ in most European of pleasure, vitality, power and youth. Viaguara said that the languages. Therefore, the first syllable or first two syllables and court should not have relied on national decisions, but this was the last two letters would be identical. Given that the consumers rejected on the basis that the national decision illustrated the would pay most attention to the beginning of the words, which sounded identical, the minor difference created by the ‘ua’ in VIAGUARA did not prevent the marks from being very similar The board had also commented that, while the suffix ‘guara’ alone might be legitimate, as guarana was an ingredient in Viaguara’s drinks, the addition of ‘via’ linked it to VIAGRA. The court then examined the conceptual similarity of the marks. Further, Viaguara promoted the stimulating and aphrodisiac It agreed with the board that, while ‘via’ meant ‘road’ in Spanish qualities of its non-alcoholic drinks. Even if the drinks would not and ‘by’ or ‘through’ in other European languages, neither of treat impotence, the consumer would be inclined to purchase the marks had any meaning in any European language, so they them on the assumption that they would have similar qualities, could not be compared conceptually. Viaguara sought to claim due to the positive association with VIAGRA. In respect of its that the ‘guara’ part of its mark would make the public think alcoholic drinks, the applicant itself admitted that the drinks of the South American plant guarana, an ingredient used in contained guarana, which has a fortifying and stimulating effect Viaguara’s drinks. The court rejected this, particularly as the on the mind and the body, similar to the effects of a drug.
‘guara’ part was only part of the name of that plant.
Viaguara alleged that images of pleasure, vitality, power and Further, the Court confirmed that the greater the similarity youth projected by VIAGRA were incompatible with a drug sold between the marks, the more likely it was that the public would under prescription to treat a serious illness. The court disagreed: perceive a commercial connection. While Article 8(5) did not VIAGRA projected an image of vitality and power rather than of require identical or similar goods, the type of goods and their the treatment of a serious illness, because it had recreational similarity would form part of the global appreciation of whether users. The applicant also challenged the board’s reliance on the promotional materials, as the applicant felt that the board should have considered the actual properties of the goods. The court The court acknowledged that the board had considered that there was a commercial connection between the marks due to their high degree of similarity and, contrary to Viaguara’s In support of its submissions, Pfizer produced a website extract submissions, other factors. Such factors included proceedings where Viaguara had described the qualities and effects of in the UK High Court, which had held that: ‘guarana’ in its alcoholic drinks. The extract claimed that Viaguara’s drinks had beneficial effects on health and also • VIAGRA was inherently distinctive (being neither an ordinary aphrodisiac effects. This showed that the drinks were marketed English word nor descriptive of the characteristics or quality as improving sexual performance, undeniably one of the qualities of VIAGRA. Pfizer also produced photos of packaging • VIAGRA had acquired a reputation in a short space of time; which showed nude masculine forms. While Viaguara claimed that nude images were an example of primitive art, the court disagreed; it was a clear attempt to link Viaguara to the qualities • it was rare that a trademark for a pharmaceutical product would enter into common parlance in such a short time.
Therefore, the court held that the board was correct to decide The court also stated that the board had considered the nature that the use of VIAGUARA would exploit, without any financial of the goods, their properties and the image projected by the compensation, the power of attraction, reputation and prestige VIAGRA mark. Therefore, the board had not failed to conduct of the VIAGRA mark by using the marketing investment of Pfizer a global consideration of the marks. The court concluded that to promote its own goods. Consumers would be inclined to the high degree of similarity between the marks and VIAGRA’s buy Viaguara’s goods believing that they would have a similar substantial reputation would create a commercial connection effect to VIAGRA. As Viaguara could not demonstrate any fair in the minds of the public even if the goods were dissimilar. use of the mark based on its previously unsuccessful ‘guarana’ Accordingly, the first condition of Article 8(5) was satisfied.
The board had also concluded that there was a risk that use of VIAGUARA mark would take unfair advantage of the reputation of the VIAGRA mark. The court noted that the well-known mark would be valuable and project images such as luxury, exclusivity, adventure or youth and that this image might be projected onto Viaguara’s mark, which would mean that sales of the goods would increase due to their association with the positive qualities of the VIAGRA mark.
This case is a relatively clear-cut example of one trademark taking advantage of another well-known mark. It is interesting to note that Viaguara continues to include the VIAGUARA mark on its website and that Pfizer has also opposed an application made in 2010 to register VIAGUARANA as a CTM. While not expressly identified in the judgment, there are clear policy reasons which explain why the court was right to uphold the earlier decision, as there could be serious implications if owners of trademarks for mass market consumer goods were entitled to claim that their products have the same effects as prescribed drugs which undergo rigorous testing and marketing Chris McLeod
Ellie Forrest-Charde
This article first appeared on WTR Daily, part of World Trademark Review, in February 2012. For further information, please go to www.worldtrademarkreview.com.

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