Pfizer Ltd & Pfizer Inc v Eurofood Link (UK) Ltd

Date

10 December 1999

Legislation

Trade Marks Act 1994 ss5, 9, 10(2), 10(3), 51, 52, 72

Keywords

Trade mark infringement; Passing off; Viagra; Viagrene; unfair advantage; detriment

Counsel

Christopher Morcom QC, James Graham (for the Claimants), the Defendant was unrepresented at trial

Solicitors:

Allen & Overy; Defendant unrepresented

Judge:

Simon Thorley QC sitting as a Deputy High Court Judge

Court:

High Court (Chancery Division)

Reported:

[2000] ETMR 896, [2001] FSR 3

Summary:

The Claimants were the proprietors of the UK and Community trade mark registrations for VIAGRA, a prescription only pharmaceutical for use in the treatment of penile erectile dysfunction. The drug was supplied in the form of a distinctive blue, diamond shaped tablet.

The Defendant proposed to market a canned "aphrodisiac" drink in the UK under the sign VIAGRENE. The drink having a similar blue colour to the VIAGRA tablet, a diamond shaped motif on the front of the can and marketing literature intended to suggest to the purchaser the benefits associated with VIAGRA, without making specific claims to medicinal properties. The Claimants sued for trade mark infringement and passing off.

Decision

The court held that use of VIAGRENE would infringe the mark under s10(2) Trade Marks Act 1994. The use of VIAGRENE would undoubtedly call the VIAGRA mark to mind and once it was appreciated that both products were both aimed at those suffering impotence their similarity, and ability to confuse, became pronounced. With regards to infringement under s10(3) the Judge held that as he had found infringement under s10(2) the case under s10(3) failed. However, in the event that he was wrong about the s10(2) infringement, he also considered whether there would have been infringement under s10(3). As confusion was not an issue under s10(3) (Sabel B.V. v.Puma A.G. (1998) RPC 199) the only issue that needed to be considered was whether the Defendant had taken unfair advantage of and caused detriment to the mark. Both of which were easily established on the facts. The case in passing off also succeeded.