Trademarks Registry hard on BI-AGRA

In Pfizer Inc v Glenside Organics Ltd, a hearing officer at the UK Trademarks Registry has upheld pharmaceutical manufacturer Pfizer's opposition to the registration of the trademark BI-AGRA for various agricultural products and chemicals.

Glenside Organics, a manufacturer of fertilizers, applied to register BI-AGRA for chemical products for use in agriculture in Class 1 of the Nice Classification. Pfizer opposed registration on the basis of its famous VIAGRA mark also registered in Class 1 for chemicals used in industry, as well as in agriculture and in the pharmaceutical and veterinary industries.

The hearing officer upheld the opposition and refused to allow the registration of BI-AGRA. He noted that the goods covered by the proposed registration were similar to those protected by the VIAGRA mark. He also stated that when assessed globally the two marks were confusingly similar. In particular, the hearing officer noted the distinctiveness of the VIAGRA mark and, following West v Fuller Smith and Turner plc (for background information, see BABY-DRY approved in bitter beer battle), the aural similarity between the two trademarks. He emphasized the importance that aural similarity can play where goods are ordered by telephone.

The decision shows that aural confusion alone can defeat a trademark application under suitable circumstances, even where visual confusion may not be present. The types of confusion that have to be taken into account, namely visual, aural and conceptual can each be independently considered, having regard to the distinctive and dominant component of a mark.

Larry Cohen, McDermott Will & Emery, London