Tipped the wink that a UK company carrying on business in Scandinavia was planning a product launch that might interest them, Viagra maker Pfizer arranged for private investigators to attend the launch of Viagrene in Stockholm.
Who: Pfizer Ltd and Eurofood Link (UK) Ltd and Eurofood Link (UK) Ltd
When: December 1999-reported in full January 2001
Where: Chancery Division of the High Court, London
What happened:
Tipped the wink that a UK company carrying on business in Scandinavia was planning a product launch that might interest them, Viagra maker Pfizer arranged for private investigators to attend the launch of Viagrene in Stockholm. Eurofood's MD explained that the whole concept of Viagrene tonic was to make people think they were buying a Viagra type product. To enhance the effect the drink was blue and the bottle had a diamond shaped graphic on the label, echoing the colour and shape of the Pfizer product. Eurofood also planned to use the strapline "For importent (sic) moments" while metatags for their site included "Viagra," "impotence,"" sex" and "Pfizer".
Viagra was registered as a trade mark in the UK in respect of pharmaceutical and veterinary products (class 5) and Pfizer sued in the UK for trade mark infringement and passing off. Beverages were not in trade mark class 5, and Viagra and Viagrene were not identical marks. This meant that to make a trade mark infringement claim stick, Pfizer had to persuade the court that the brands were "similar", that drugs and beverages were "similar" products and that use of "Viagrene" conduct would cause confusion. Alternatively if drugs and drinks weren't similar, they would have to establish that Viagra had a reputation in the UK and that Viagrene "without due cause took unfair advantage of or was detrimental to the repute" of the Viagra brand.
Following earlier European Court of Justice ("ECJ") rulings on the point, the Court held that whether marks or products were "similar" were interdependent questions and the distinctiveness of the brand that was allegedly infringed could be highly relevant.
Applying that test here, with Viagra and Viagrene very similar and the Pfizer brand virtually a household name by the time the UK trade mark registration was applied for, the Court had no difficulty finding that beverages and drugs were indeed "similar" in this context and that infringement had been proved. Even had Pfizer not won on this point, the Court held that in the light of the pharmaceutical company's need to control perceptions of the drug in order to ensure for example that there was a proper awareness of its potential side-effects, it was irresponsible and potentially very damaging to the brand for imprudent references to the "recreational benefits" of the drug to be made, even indirectly as in this case. A separate, but important point was that as Pfizer had obtained registration of the Viagra trade mark as a "Community Trade Mark", the Court was able to take into account, when considering whether infringement had taken place, conduct which had occurred in EU states outside the UK.
Why this matters:
The concept of "similarity" of brands and goods in a trade mark infringement context has changed radically since the ECJ CANON trade mark decision reported in 1999. Now it is open to brand owners to put forward evidence of their trade marks' distinctiveness to bolster a case that might otherwise be weak on "similarity" of products. This is a far cry from the simpler, (and potentially cheaper to litigate) objective test propounded by UK judges before the CANON case. It is also a recipe for further legal complications and higher litigation costs.
