The EU General Court has found that the European Union Intellectual Property Office was right to dismiss a trademark held by Austria’s Gall Pharma on account of its similarities to Pfizer’s Viagra.
In a ruling on 3 May, the court rejected Gall’s appeal against EUIPO’s findings that “Styriagra”, its line of blue sugar-coated pumpkin seeds, bore sufficient similarity to the name of the famous erectile dysfunction treatment for consumers to connect the two products and create the potential for Gall to eat into Pfizer’s market share.
Gall’s application for a trademark for the name Styriagra was published in October 2013, prompting Pfizer – which has held a trademark for Viagra since 1998 – to file a notice of opposition two months later. While the opposition was initially rejected, Pfizer successfully appealed the decision with EUIPO, which rejected Styriagra’s mark in June 2016.
In its decision, EUIPO’s Fifth Board of Appeal noted that there was a degree of similarity between Styriagra and Viagra, and that the significant reputation of the latter extended beyond its target audience “to the whole population of the European Union”. This strong reputation coupled with the overlap between the relevant consumer base of the goods meant that consumers, particularly in Austria, would make a connection between the two products, and that there was a “high probability” that Styriagra would be able to take unfair advantage of Viagra’s profile.
The Austrian company claimed that the impression given by the two names was “substantially influenced” by differences at the beginning of the words and that differences in their length and number of syllables also argued against them being confused.
The court, however, backed the board’s findings that differences at the beginning of the words weren’t sufficient to offset the identical sounds at the end. The court pointed out that the fact that consumers normally attach more significance to the beginnings of words wasn’t enough to invalidate the principle that assessments of the similarities between trademarks “must take into account the overall impression given by them.”
Gall also argued that the board had mischaracterised Viagra’s reputation among the general public, which it said would only be aware of the product by hearsay, and claimed the relevant public for assessing its reputation was the doctors that prescribe it and, indirectly, men suffering from erectile dysfunction.
The court, however, found that “due to advertising campaigns and wide press coverage” of Viagra and its effects between 2001 and 2013, it was widely known to the general public. It added that Gall had waited until the hearing of the case to dispute the reputation of Viagra, and pointed out that EU case law held that no new pleas could be introduced in the course of proceedings unless they were based on new issues that came to light during the proceedings. The court also noted that Gall’s “hearsay” argument was in any case irrelevant to the purposes of assessing Viagra’s reputation.
Gall further claimed that, even in spite of Viagra’s reputation, it was unlikely that either the alleged relevant public for the drug or the general public would infer a link between the two products on account of their inherent differences.
The court, however, gave weight to the board’s findings that “the aphrodisiac properties attributed to certain dry and preserved fruits and vegetables are capable of giving rise to an association” between the products. Gall, in its application, conceded that rumours of the aphrodisiac effects of pumpkin seeds are “widespread”, but submitted that they were unfounded. Nevertheless, the board found, and the court upheld, that an association with Viagra on this basis remained possible.
As to the question of unfair advantage, the court found that, despite the differences in the products themselves, Viagra “could see its image of improving sexual potency transferred to the applicant’s goods.” The court found that the name Styriagra could be read as a play on Viagra by combination of the name of the Austrian region where it is manufactured – Styria – and the soundalike suffix “agra”, leading consumers in the country to be particularly likely to infer a link between the products.
The question of whether Styriagra would actually deliver aphrodisiac effects was irrelevant, the court said. “What matters is that the general public with an average degree of attention will be inclined to purchase them thinking that it will find similar qualities, such as an image of improving sex life, owing to the transfer of positive associations projected by the image of the earlier mark”.
The court dismissed Gall’s arguments in full and ordered it to pay the costs of the proceedings.
In the EU General Court
Gall Pharma v EUIPO
- Judge Guido Berardis
- Judge Dean Dean Spielmann
- Judge Zoltán Csehi