Pfizer Products Inc v Viaguara S.A

Pfizer Products Inc. opposed the registration of the trade mark VIAGUARA by Viaguara S.A. The dispute concerned whether the proposed registration of VIAGUARA for alcoholic beverages was likely to deceive or cause confusion, thereby infringing Pfizer's rights in its registered trade mark VIAGRA. The matter was heard by Iain Thompson, a Hearing Officer for Trade Marks.

The legal issues before the court were whether the VIAGUARA trade mark was deceptively similar to Pfizer's registered trade mark VIAGRA, and whether its use would be likely to deceive or cause confusion, contrary to sections 44 and 60 of the relevant Act. Specifically, the court considered whether the VIAGUARA mark was deceptively similar to Pfizer's defensive registration for VIAGRA in Class 33, covering "alcoholic beverages (except beers)". The court also considered grounds relating to deception or confusion due to the connotation of the VIAGRA mark and contravention of the Trade Practices Act and passing off law, but ultimately focused on the section 44 ground.

The Hearing Officer found that the explanation provided by Viaguara S.A. for the origin of the VIAGUARA trade mark, combining "via" and "Guara," was strained and not supported by evidence. The court noted that the word "via" does not mean "from" or "out of" as suggested by the applicant. Furthermore, the court considered material from Viaguara S.A.'s website, which referenced guarana as increasing sexual appetite and depicted ithyphallic stick figures, suggesting an awareness of the similarity to Pfizer's VIAGRA mark and its associated effects. The Hearing Officer concluded that the VIAGUARA trade mark was likely to be pronounced in a way that, in the context of alcoholic beverages, would lead to confusion with the VIAGRA trade mark, particularly in a bar environment where a request for one might be misheard as a request for the other.

Consequently, the Hearing Officer found the VIAGUARA trade mark to be deceptively similar to Pfizer's registered trade mark VIAGRA and upheld the opposition. Protection for the VIAGUARA trade mark was refused in respect of all goods listed in the International Registration. Pfizer Products Inc. was awarded its costs.