Competitor may not use shape and colour of Viagra pill

Argentina

In Pfizer Inc v Microsules Bernabo SA (Case 5862/01, August 15 2006), the Federal Court of Appeals has ordered the defendant to cease the use of a rhomboid-shaped pill and the colour blue on a drug to treat erectile dysfunction.

Upon discovering that competitor Microsules Bernado SA was producing a pill to treat erectile dysfunction using a rhomboid shape and the colour blue, Pfizer Inc brought a suit requesting the court to order Microsules to:

  • cease using a rhomboid shape and the colour blue for its pill on the grounds that it infringes Pfizer's shape and colour trademark registered in Class 5 of the Nice Classification and used for Viagra - a product to treat erectile dysfunction; and

  • pay the relevant compensation for damages.

In its response, Microsules requested the cancellation of Pfizer's trademark registration on the following grounds:

  • in its application, Pfizer failed to specify that the shape was that of a pill;

  • applicable laws do not deem the shape of products and their unique colours as trademarks;

  • the registered trademark at issue would not be subject to registration under trademark laws because the consumer is not able to view the pill without opening its packaging; and

  • Microsules started to use its design before Pfizer applied for its registration in Argentina.

The court found for Pfizer and ordered Microsules to cease using the shape and colour trademark; it also awarded Pfizer Ps400,000 (approximately €100,000) in damages. The court dismissed Microsules's counterclaim for cancellation. Microsules appealed.

The Court of Appeals upheld the first instance decision; it ordered Microsules to cease using Pfizer's trademark and dismissed the counterclaim. However, it overturned the award of damages ordered by the lower court.

With respect to Microsules' counterclaim, the appellate court held that from looking at the shape published in the Trademark Bulletin, it was impossible not to conclude that the product at issue was a pill. It therefore determined that this reproduction could not be deemed misleading or inaccurate based on the sole allegation that Pfizer had failed to declare in its application and subsequent publication that the product at issue was a pill, when this was evident from the drawing reproduced in the publication and is the usual presentation of medicines.

The court then considered that Pfizer's registration entailed a certain combination of a shape and colour in a pill that was used to identify a worldwide-known drug to treat erectile dysfunction. Further, the court stated that the originality of the trademark was precisely based on the combination of shape and colour.

Regarding the content subject to trademark registration, the widespread advertising of the product was evidenced by the submission of newspaper clippings that referred to the "blue pill" and its therapeutic properties. The court concluded that the product could be definitely identified after taking it from the box and opening the blister pack.

Finally, with respect to Microsules's alleged use of the design prior to Pfizer's application, the court took into consideration the worldwide advertising and the obvious arrival of the so-called 'blue pill' in Argentina, as shown by various pieces of news. The court reasoned that if it admitted that Microsules had a better right to the design because it had started to sell its product before Pfizer filed its own trademark application in Argentina, this would mean accepting a behaviour that is against fair competition, good faith and fair trade practices. The court concluded that Microsules produces and markets drugs and thus must have been aware of the Viagra pill shape and colour.

However, the appellate court dismissed Pfizer's claim for damages, arguing that considering Microsules's sales and profits was not enough to prove the loss allegedly suffered by Pfizer. The court reasoned that the shape and colour of Microsules's pills could only be seen after the product had been purchased, and the box and blister pack opened. Therefore, the court reasoned, neither the shape nor the colour intervened in the purchase decision, in which other truly significant factors - such as price - might have played a role. Moreover, the report by a court-appointed expert did not find an increase in Pfizer's sales and a decrease in Microsules's sale after the enforcement of the injunction. Therefore, the court concluded, there was no proof of any loss whatsoever, since it had been proven that the shape and colour of the pill had no influence whatsoever in the marketing of the drug by both parties.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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