Non-confusion of the VIAGRA mark

On September 9, 2004, Tribunal II of the Federal Court of Appeals of Buenos Aires delivered its ruling on the Pfizer case.The Court of Appeals affirmed the lower court’s holding and rejected Finadiet’s opposition to Pfizer’s registration of the VIAGRA mark, with costs.

Finadiet had opposed Pfizer’s registration to the mark VIAGRA, arguing that it was confusingly similar to its existing trademark VAGRAN, which is used on an antihistaminic.Finadiet also claimed that the risks associated with the use of VIAGRA would tarnish their senior mark.

After performing a side-by-side comparison, the Court of Appeals found that the VIAGRA and VAGRAN marks are not confusingly similar.In performing this comparison the court looked at several factors.

The first factor the court looked at was the environment in which the goods are offered for sale.The court relied on the fact that Pfizer’s product VIAGRA would only be sold under “prescription to be filed at pharmacies.”Prescriptions are only used for certain medications and pharmacies pay more attention and control to the sale of prescription-only products.Since each sale is regulated, confusion at the time of the sale is unlikely.

The court added that the prescription requirement on each sale of Pfizer’s product necessitates a visit to a doctor and further reduces the chances of confusion. In addition to the fact that the VIAGRA mark has become notorious -even though this happened after Finadiet’s mark was filed and used- consumers would hardly be confused because of the special care and emphasis used when purchasing the product.

The second factor that the court looked at was the relation of the two products.The court found that although Finadiet’s VAGRAN covers all products in International Class 5, since 1983 it has only been used to identify “antihistaminic and antiallergenic products.”Antihistaminic products, the court elaborated, are not related to the product identified with the VIAGRA mark.Additionally, there is no evidence that even suggests that the defendant intends to use the mark VAGRAN for any product other than those which they have identified so far with their mark.

The third factor in the court’s analysis was the packaging of the defendant’s product.The court found that Finadiet does not use the VAGRAN mark alone, but rather in conjunction with other terms, such as ASTEMIZOL, DESONGESTIVO or PSEUDOEFEDRINA.This, the court found, further reduces the possibility of confusion.

The fourth factor the court used was the “unquestionable” international notoriety of (i) the mark VIAGRA and (ii) the specific product VIAGRA.This notoriety, in addition to the existence of Pfizer’s registration for VIAGRA in the United States, automatically rules out Finadiet’s argument that Pfizer was attempting to trade on their prestige.

The court also emphasized Finadiet’s attitude throughout the proceedings, and particularly referred to three instances of bad faith:

(i)Finadiet’s withdrawal of an identical opposition to Pfizer's VIAGRA application in Uruguay while maintaining the opposition filed in Argentina.This contradictory course of action -with no reasonable explanation- was deemed questionable by the court.

(ii)Finadiet’s application for VIAGRAN and their acknowledgement that this application was solely aimed at responding to Pfizer’s “attacks” and without any intention to use the mark.The court viewed this as a maneuver to put undue pressure on Pfizer.

(iii)Finadiet’s application for VAGRA-N which was opposed by Pfizer and then the subsequent attempt by Finadiet to argue that since Pfizer had filed an opposition to the VAGRA-N application, Pfizer had acknowledged the confusing similarity between the trademarks in conflict.The Court rejected this argument stating that comparing VIAGRA and VAGRAN is not the same as comparing VIAGRA and VAGRA-N.

In regard to tarnishment the defendant argued that the registration of the mark VIAGRA would negatively affect their widely used mark VAGRAN.According to Finadiet the VIAGRA product encompasses severe dangers and in some instances has even caused deaths.

However, the court, relying on the official medical expert’s report, stated that there is no proof that the mentioned deaths had been caused by the use of VIAGRA. The court elaborated that the reason why the drug “sildenafil” is only sold under prescription is to ensure that a consulting physician would evaluate the risks involved in each particular use.

The court also commented on additional information included in the medical report with respect to the VAGRAN mark.According to the official expert, since June 1999 the drug “astemizol” (active ingredient of VAGRAN) has been voluntarily withdrawn from the US market due to the high risks associated with the drug.The decision to remove the drug was supported by the FDA. In view of this, the Court rejected defendant’s argument regarding that the risks associated to the use of VIAGRA would tarnish the VAGRAN mark.