Energy drinks company cannot register 'Viaguara', court rules

A drinks company has been refused the right to register the trademark 'viaguara' because it was too similar to 'viagra', the protected name of the drug used to treat erectile dysfunction.

Upholding the decision by the EU's trademark agency, the European Court of Justice said refusal was justified, even where products or services covered by the applicant were different from those covered by the earlier mark, if it took unfair advantage of the earlier mark's reputation.

In this case, the court said in T-332/10 Viaguara the reputation of the mark Viagra extended not only to consumers of the drug but also to the general population.

One particular argument revolved around the function of the products covered by the Viagra mark.

Viagra, the drinks company said, covered 'serious medicinal products available on prescription', unlike its own products, which were associated with entertainment.

The court agreed the primary function of a mark was its original function '“ to protect the products covered '“ but that a mark also acted as a means of communicating other messages about the qualities of the products covered.

This included the image it projected, the court continued, 'such as luxury, lifestyle, exclusivity, a sense of adventure, youth'.

'In this sense,' the court said, 'a sign had an intrinsic economic value that was autonomous and distinct from the products or services in respect of which it was registered.'

In this regard, the court pointed, Viagra was also 'used for recreational purposes among younger segments of the population', which suggested that the impressions associated with the drug could be transferred to non-medicinal products, in particular alcoholic drinks.

Although the nature of such drinks was different from Viagra, the fact these were consumed at parties and on special occasions meant they could be perceived by the public as having aphrodisiac or stimulating properties.

Such association created by a product unrelated to the earlier mark was, in effect, an attempt to ride on the brand's coat-tails to try and benefit from Viagra's power of attraction, its reputation and its prestige.

Polish company Viaguara applied to the Office for Harmonisation in the Internal Market (OHIM) in October 2005 for registration of the word sign VIAGUARA as a community trademark in respect of energy drinks and alcoholic drinks.

Pfizer, the US pharmaceutical company proprietor of the earlier community trademark VIAGRA, opposed the application, which resulted in OHIM refusing to register VIAGUARA.