Vodka mark held to be detrimental to famous VIAGRA mark

Switzerland

The Commercial Court of Bern has upheld an action by the producer of the well-known Viagra drug for a declaration of invalidity of the trademark VIAGUARA for vodka (July 6 2010, published in May 2011).

The trademark VIAGRA, owned by Pfizer Inc, is registered under No 433 655 in the Swiss Trademark Register for a number of goods in Class 5 of the Nice Classification, namely pharmaceutical and veterinary products. It is used for a widely known drug against erectile dysfunction.

The defendant was a Polish vodka manufacturer. It owned an international trademark registration for VIAGUARA for alcoholic beverages (International Registration 855 223).

The defendant did not file an answer and did not appear in the main hearing before the Commercial Court of Bern. Therefore, the court had to rely on the factual assertions of the plaintiff. The plaintiff invoked Article 15 of the Swiss Trademark Act, which protects famous marks even with regard to goods for which they are not registered. According to the definition of the Swiss Federal Court, a 'famous' trademark is a mark that enjoys a general good reputation within a large segment of the public (see, eg, FCD 124 III 277 (NIKE) and 130 III 748 (NESTLÉ)).

Since the defendant did not appear in court, the plaintiff did not have to prove the facts on which the famous character of its mark was based. However, the First Board of Appeals of the Office for Harmonisation in the Internal Market, as well as a number of European courts (eg, the Oberlandesgericht Munich and the High Court of Justice of England and Wales) have confirmed in relevant decisions that VIAGRA had a reputation and was well known. Therefore, there was no doubt for the court that VIAGRA was a famous trademark within the meaning of Article 15 of the Trademark Act.

The court held that use of VIAGUARA was detrimental to the distinctive character of VIAGRA, since it could not be excluded that part of the public could be misled into believing that the parties were connected due to the similarity of the marks. According to the likelihood of confusion test, the marks were confusingly similar since the first syllable 'viag' and the last syllable 'ra' are identical in both marks. In addition, the sequence of consonants (v-g-r) was the same. Since VIAGUARA does not have an obvious meaning, the two marks were deemed to be confusingly similar for the purposes of the Swiss Trademark Law.

Finally, the court found that the manner in which the VIAGUARA mark is used (ie, for strong alcoholic beverages) conflicted with the serious reputation of the plaintiff's product, holding that “alcohol and medicaments are incompatible products”. Therefore, the court ordered the cancellation of the VIAGUARA mark in Switzerland and issued an injunction preventing the defendant from using the mark for beverages.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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