Pfizer files complaints to halt sale of counterfeit Viagra

Pfizer Inc, the world's largest pharmaceutical company, has filed lawsuits in the US District Court for the Southern District of New York against five online pharmacies to stop the sale of unauthorized and allegedly counterfeit shipments of Pfizer's best-selling drug Viagra. Pfizer is the only company in the United States with approval from the Food and Drug Administration to sell sildenafil citrate - the active ingredient found in Viagra. Pfizer has faced increasing competition from counterfeiters selling fake Viagra to US consumers through interactive websites.

In the lawsuits, Pfizer claims that the online pharmacies' use of the VIAGRA trademark and registered tablet design:

  • are unauthorized;

  • constitute unfair competition with the products and services offered under the VIAGRA mark;

  • dilute the distinctive quality of the famous VIAGRA mark;

  • injure Pfizer's reputation as the source of high quality pharmaceutical products; and

  • are willful, deliberate attempts to trade unlawfully upon the goodwill associated with the VIAGRA mark and tablet design.

Pfizer's lawsuits were in part motivated by its recent survey of 676 men over the age of 35 in the United States showing that more than one-fourth mistakenly believed that Pfizer is the source of Viagra-related spam. Pfizer's other main motive is that counterfeit drugs, such as those marketed as 'generic Viagra', often contain a low level of active ingredients and sometimes contain dangerous heavy metals such as lead. According to Pfizer, it is nearly impossible to distinguish the counterfeit versions from the real Viagra drug. Therefore, the proliferation of websites offering counterfeit Viagra is a menace to public health.

The five websites named in the trademark infringement suits are:

  • 'yousaverx.com';

  • 'viagraxonline.com';

  • 'qualitygenerics.com';

  • 'myrxforless.com'; and

  • 'genericviagrapills.com'.

Additionally, Pfizer has moved to seize the domain names of 25 other websites that sell counterfeit Viagra by filing complaints under the Uniform Domain Name Dispute Resolution Policy with the World Intellectual Property Organization.

Spam watchers, meanwhile, question the effectiveness of Pfizer's legal gambit. Since there are thousands of websites and spammers selling Viagra, Pfizer's legal actions will only amount to a small dent in a big problem. Even so, Pfizer feels that the legal proceedings will (i) serve as a warning to counterfeiters that their actions will not go without repercussions, and (ii) alert its customers to be aware of fake Viagra.

Pfizer also filed lawsuits against online pharmacies in April and May in relation to its cholesterol drug Lipitor - the world's bestselling drug.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, with the assistance of Laura Grijpma of the Rijksuniversiteit Groningen

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