Successful Pfizer opposition against ‘Styriagra’ mark affirmed
The EU General Court ruled in favour of Pfizer today after the company had opposed a trademark application made by Gall Pharma.
Austria-based Gall Pharma filed an application to register an EU trademark for the word ‘Styriagra’ at the European Union Intellectual Property Office (EUIPO) in September 2013.
The goods and services for the applied-for word fell into class 29 covering preserved, frozen, dried fruits and vegetables, in particular pumpkin seeds.
In December 2013, Pfizer filed a notice of opposition against the registration. Pfizer’s opposition was based on the word mark ‘Viagra’, which was registered in April 1998. The earlier mark falls under class 5 and covers pharmaceutical and veterinary preparations and substances.
After the Opposition Division rejected Pfizer’s opposition in April 2015, the Fifth Board of Appeal of the EUIPO upheld the appeal and dismissed the trademark application.
The EUIPO based its decision on the grounds that the signs were similar overall. It also said that the “significant reputation” of the Viagra mark extended not only to consumers of the goods, but to the whole population of the EU. However, it did acknowledge that the reputation of the earlier mark was limited to pharmaceutical preparations and did not extend to food and drink.
Third, the board said that although the goods covered by the ‘Viagra’ trademark were aimed at the male population suffering from erectile dysfunction, the goods covered by the applied-for mark were aimed at the average consumer.
It also said that a connection between the marks would be made by consumers due to their similarity and the reputation of Viagra. According to the board, “although the goods differed in their nature and purpose, certain aphrodisiac effects could be attributed to dried and preserved fruits and vegetables, which might give rise to an association in the mind of the relevant public”.
In its argument before the General Court, Gall Pharma said that the similarity of the trademarks should be ruled out, both visually and phonetically.
Gall Pharma said that the beginning of the marks ‘Viagra’ and ‘Styriagra’ have a greater impact than the end of the word.
According to Gall Pharma, in German-speaking parts of the world, the marks will be pronounced: ‘sty-ri-agra’ and ‘vi-agra’. Therefore, it argued the “marks at issue will no longer have two syllables in common”, but only the last syllable ‘agra’. Styria is also a state in Austria.
The General Court said that, the assertion that the public will distinguish in its pronunciation the word ‘styria’, irrespective whether or not it has identified it as designating an Austrian region, and the ending ‘gra’ does not justify omitting from the phonetic comparison a whole element of the mark applied for.”
It said that the board did not fail to take into account the phonetic similarity between the marks, ruling that there is an average degree of similarity.
The General Court also said that the board was correct in recognising Viagra’s reputation in the EU.
Gall Pharma’s appeal was rejected and it was ordered to pay costs.
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