29. Juni 2018

Sexually potent pumpkin seeds: STYRIAGRA and VIAGRA trade mark dispute

A recent EU General Court decision refused to overturn the findings of the EUIPO Board of Appeal. This was due to the similarities between the trade marks STYRIAGRA and VIAGRA and the reputation which VIAGRA have in the EU for their erectile dysfunction pill.

This dispute arose following an EU trade mark application filed for the word STYRIAGRA by Gall Pharma GmbH for “preserved, frozen, dried fruits and vegetables, in particular pumpkin seeds” (in class 29). The STYRIAGRA product is a blue sugar-covered pumpkin seed.

Pfizer Inc, the owner of the well-known VIAGRA erectile dysfunction brand (and also a blue pill) filed an opposition based on Pfizer's earlier trade mark rights to VIAGRA which date back to 1998 and cover various goods in class 5.

At first instance, the EUIPO rejected the opposition. Pfizer disagreed with the decision since they considered the brands STYRIAGRA and VIAGRA to be confusingly similar (especially when spoken). They thought that the use and registration of STYRIAGRA would take unfair advantage of their brand's reputation and that any positive values which the public attached to VIAGRA would be also attributed to the STYRIAGRA pumpkin seed product. Essentially, the public may automatically assume that the STYRIAGRA pill will help overcome erectile dysfunction. If that happens then the trade mark application should be refused on the basis that the applicant has automatically gained an advantage (without their own investment) by attributing themselves to the earlier well-known brand.

An appeal from Pfizer to the EUIPO Board of Appeal followed and, after a year or so, the EU trade mark application for STYRIAGRA was refused for all the goods applied for. The Board of Appeal essentially agreed with Pfizer's arguments finding that there was a degree of similarity between the marks and that, since the VIAGRA mark has a significant reputation in the EU, there was a high probability of STYRIAGRA taking unfair advantage of VIAGRA's well-known status with the relevant public (particularly in Austria where Gall's company was based and where Styria is a geographical place).

Gall was of the opinion that the first instance decision was correct and so appealed to the General Court on the basis that the Appeal Board's decision should be annulled because the trade marks were visually and aurally dissimilar on the basis that the beginning of the marks and their length should be taken into account.

On 3 May 2018, the EU General Court handed down their decision which dismissed the appeal and ordered Gall to pay the costs for the proceedings. The court agreed with the EUIPO Board of Appeal, adding that Gall's argument that the number of syllables and beginning of the marks was different was not sufficient to overcome the fact that both marks have the shared element IAGRA and that would be pronounced identically, irrespective of the EU language spoken. The term STYRIA was also weakly distinctive as an Austrian state. That does not reduce the level of similarity between the marks and may even increase the level of confusion to the Austrian consumer since the IAGRA element becomes the most distinctive element to consumers in that country. It followed then that at least an average degree of aural similarity existed.

In relation to the reputation of VIAGRA, the court agreed that the relevant European public would be aware of the mark since they had been exposed to a large volume of advertising over many decades and extensive press coverage. Whilst there was a low level of similarity between the marks in some respects, both marks shared the same ending (IAGRA) which is not a common or usual ending. Although the goods were not directly overlapping, they shared similarity in that they relate to a public looking to use or consume products that act as an aphrodisiac. That gives rise to an association and link between the marks in the mind of the relevant public, since they may purchase the pumpkin seed product expecting it to increase erectile functioning like the VIAGRA product. It was also held that STYRIAGRA could be seen as a play on the word VIAGRA, a potential new product name and a reference to where the product could be made (Styria, Austria, for example).

Takeaway Message

This case is a useful reminder that occasionally a decision from the EUIPO at first instance should be appealed upwards to at least the Board of Appeal. This is especially true in cases where the opponent has a clear reputation for certain products in the EU and the first instance decision does not give sufficient weight to such evidence. Appealing upwards can provide the opponent with the opportunity to have a full consideration of the evidence of use presented.

Case T-662/16

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