VIAGRA stands up to VAGRAN challenge

Argentina's Federal Court of Appeals has rejected Finadiet SA's opposition to pharmaceutical company Pfizer Products Inc's application to register the mark VIAGRA. The court found that VIAGRA is not confusingly similar to Finadiet's earlier VAGRAN mark (Case 3369/98, September 9 2004).

Pfizer had applied to register VIAGRA for products to treat erectile dysfunction in Class 5 of the Nice Classification. Finadiet opposed the application on the basis of its earlier VAGRAN mark, which is registered for all goods in Class 5 but is used only for antihistaminic, anti-allergic and decongestive products. Pfizer filed a complaint requesting that Finadiet's opposition be dismissed. The court of first instance allowed Pfizer's application. It found that the VAGRAN and VIAGRA marks are not confusingly similar. Finadiet appealed.

The Federal Court of Appeals upheld the decision. It based its ruling on the following facts and reasoning:

• Pfizer's product is sold exclusively by prescription, which means that (i) the general public cannot choose it directly and thus confuse it with Finadiet's products, and (ii) pharmacists are particularly attentive to handing out the correct product.
• Finadiet has used the mark VAGRAN exclusively in relation to antihistaminic, anti-allergic and decongestive products since 1983, and there is no evidence that it ever intends to use this mark for other products.
• The mark VAGRAN is always followed by another name on the products' packaging (eg, VAGRAN DESCONGESTIVOS and VAGRAN ASTEMIZOL), which makes the overall impression very different from that created by VIAGRA, which is used on its own.
• Finadiet opposed Pfizer's application for VIAGRA in Uruguay, but it later withdrew its opposition. This implies that Finadiet considered that the marks are not confusingly similar.
• Finadiet applied to register the mark VIAGRAN in Argentina after Pfizer had applied for VIAGRA. Finadiet declared that (i) it had no intention to use the VIAGRAN mark, and (ii) it would withdraw the application on condition that Pfizer withdrew its VIAGRA application. The court considered that this application had been filed with the sole objective of putting pressure on Pfizer.
• Finadiet also applied to register the mark VAGRA-N after Pfizer had filed its VIAGRA application. Pfizer opposed the VAGRA-N application, which Finadiet contended constituted an acknowledgment of the confusing similarity between the marks. The court rejected this claim, finding that the fact that the 'n' in VAGRA-N was separated from the rest of the mark by a hyphen made the mark dissimilar to VIAGRA.
• The international reputation of the mark VIAGRA refuted any allegation of bad faith on Pfizer's part.

The court also dismissed Finadiet's claim that allowing VIAGRA to proceed to registration would tarnish the VAGRAN mark. Finadiet contended that Pfizer's product poses health risks and has even caused deaths. While the court admitted that sildenafil citrate - the active ingredient in Viagra - can have severe side effects, this was the reason it is only available by prescription. The court pointed out that Finadiet's products sold under the VAGRAN mark can also have severe side effects. In particular, astemizole - the active ingredient in one of the VAGRAN products - had been withdrawn from the US market.

"This article first appeared on WTR Daily, part of World Trademark Review, in October 2004. For further information, please go to www.worldtrademarkreview.com."