On January 25, 2012 the General Court of the European Union ruled that the mark Viaguara could not be registered as a Community trade mark for drinks as such mark is likely to take an unfair advantage of the repute of the very well-known mark Viagra.

This is an interesting decision for owners of mark with a reputation as it clearly states that free-riding on the repute of an earlier mark is not permitted in the European Union (in Italy, Courts applies very similar principles).

The General Court found that, even though a direct link cannot be established between the goods covered by the marks, an association with the earlier mark Viagra is possible, considering the huge reputation acquired by Viagra which extends beyond the consumers of the drugs concerned.

The Court defined the conditions relating to the risk of an unfair advantage being taken of  the repute of the mark Viagra.

According to the Court, such risk consists in the danger that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the subsequent mark, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. The Court found that even if the drinks for which Viaguara had been applied for do not have the same benefits as a drug to treat erectile dysfunction, the consumers will be inclined to buy them thinking that they will find similar qualities, owing to the transfer of positive associations projected by the image of the earlier mark.

In addition, the Court also stated that, since the drug marketed under Viagra is also used "recreationally" by young persons, the image of vitality and power associated to Viagra could be transferred to non-medicinal products, and in particular, to the alcoholic drinks for which Viaguara had been applied for, of a different nature, but consumed when going out or at parties.

The Court concluded that Viaguara represents an attempt to ride on the coat-tails of Viagra in order to benefit from its power of attraction and exploit the marketing effort expended by Pfizer in order to create and maintain its image. This advantage - says the Court - must be considered to be an advantage that has been unfairly taken of the repute of the mark Viagra.

I would be very much intereseted to hearing your views. Feel free to contact me, Alessandro Ferrari (alessandro.ferrari@dlapiper.com), if you want to discuss.

Posted by Alessandro Ferrari on Tuesday 20 Mar 2012

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