In an entertaining case (T-332/10) presented before the General Court, the judges confirmed the decision of the Office which upheld an opposition against CTM application VIAGUARA for Classes 32 and 33 goods based on earlier Community trademark VIAGRA registered in Class 5.

The Office found that there was no risk of confusion on the grounds of Article 8 (1) (b) CTMR because although the marks are similar, the goods are too different.

On the grounds of Article 8 (5) CTMR, the earlier mark enjoys such an enhanced reputation in all the EU for medicines used to treat erectile dysfunction and the marks being highly similar, there is a risk the public makes a link between VIAGRA and VIAGUARA , the latter taking unfair advantage to the distinctive character and reputation of VIAGRA.

The Board of Appeal had taken into account the degree of proximity between the particular properties of the goods registered for VIAGUARA and the image promoted by the mark VIAGRA. The Court rejected the arguments of the Polish CTM applicant according to which the image of youth, vitality, strength would be incompatible with the ‘serious’ image of a medicine delivered on prescription, since Viagra is a product which allows to better youth and quality of life. Further the Board rightly considered that the stimulating and aphrodisiac properties claimed for commercial purposes by such goods as ‘energy drinks’ belonging to class 32 coincide with the therapeutic indications of Viagra. Thus even though the consumer won’t believe that the non-alcoholic drinks will cure the problems for which Viagra can help, he will nonetheless be inclined to buy them believing it will find similar qualities, such as increasing the libido, due to the fact of transferring positive association projected by the image of VIAGRA.

Finally, the opponent Pzifer Inc. had produced evidence of actual packaging (represented here right) of the Viaguara drinks which reproduce ithyphallic male figures which allude directly to the highly famous properties of the earlier mark. This conclusion could not be overturned by the Polish applicant’s argument that primitive art often represents naked figures. In addition, an extract from the Internet website of the Polish drink company was produced in the procedure where it is explained that the properties of the substance ‘guarana’ contained in the alcoholic drinks in class 33, would supposedly have positive health properties as well as aphrodisiac. Therefore, the Court confirmed that the EU consumer will probably not identify VIAGUARA with guarana ( the famous South American plant), but rather will be attracted by these drinks because the mark and qualities of the goods incontestably remind of the earlier mark’s reputation.