VIAGRA receives extended protection

A hearing officer at the Australian Trademarks Registry has allowed Pfizer Products Inc to extend its defensive registration for VIAGRA to include a large number of goods and services that were excluded from the original registration. The hearing officer held that the connection between the goods and services covered by the new application and Pfizer’s VIAGRA mark was sufficient to allow the broader coverage.

Pfizer filed an application (Application 769222) with the Australian Trademarks Registry in August 1998 in order to protect VIAGRA as a defensive trademark across a wide range of classes of the Nice Classification. At length, the application was accepted at an ex parte hearing on condition that Pfizer exclude goods and services for which there was found to be insufficient evidence to demonstrate that members of the public were likely to draw a connection with Pfizer. However, before restricting the coverage of application 769222, Pfizer filed a divisional application covering the goods to be excluded - Application 894613.

When Pfizer’s new application came before a hearing officer, it waived its claim to divisional status, so that the date upon which it was actually filed – November 9 2001 – became its priority date. Thus, it had the advantage of a further three years of use of the VIAGRA mark with which to support its claim that members of the public would draw a connection with Pfizer as a result of another party’s use of a VIAGRA mark (or a substantially identical or deceptively similar mark) in relation to the broader range of goods and services.

While the hearing officer noted that “the evidence suggests most of the Australian population would be aware that VIAGRA is a trademark used for only a single line of pharmaceuticals”, he was satisfied that the further three years’ use allowed a sufficient connection to be inferred for a wider range of goods and services than had been the case when Application 769222 had been filed. A perceived connection might have its basis in licensing, sponsorship or brand extension, or indeed on some other basis provided that the relevant inference is “open to some articulation of the factors (whatever they may be) on which it is allegedly based”.

The hearing officer allowed extended coverage for a wide range of goods and services, including:

• gelling and swelling preparations, silicon, chemicals used in industry, and chemical preparations for non-medical and non-veterinary scientific purposes in Class 1;
  
  
• protein raw material, saccharin and artificial sweeteners in Class 1;
  
  
• dental and veterinary apparatus and instruments, and adhesive preparations for surgical bandages in Class 10;
  
  
• goods and services associated with general well-being, such as sporting articles in Class 28;
  
  
• various foods and beverages in Classes 29, 30, 31, 32 and 33;
  
  
• seeds and malt, live animals, natural plants and flowers, and agricultural, horticultural and forestry products and grains in Class 31; and
  
  
• physical education, sports facilities services, sports equipment rental, and hygienic and beauty care services in Classes 41 and 44.

In the hearing officer’s opinion, these were goods not “so far removed from those on which VIAGRA is famous as to give any pause for thought before a connection, of whatever sort, is inferred with Pfizer”, and that there was nothing in the connection to be inferred that “might be described as fanciful or unlikely”.

The hearing officer also noted that VIAGRA is an invented word and, given the extent of its use and the reputation that followed from this, it was difficult to see how any person other than Pfizer could have a legitimate need to use it.

Malcolm Farr, Shelston IP, Sydney