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Tuesday, 22 December 2009

"Styriagra" - The curious case of the little blue pumpkin seed pills

Austrian news site Der Standard recently reported on the next chapter in a curious trade mark dispute between an Austrian pumpkin seed oil producer and pharmaceutical company Pfizer over the use of the mark "Styriagra" on pumpkin seed pills.

About a year ago, the Class 46 blog reported that Richard Mandl, a pumpkin seed oil producer from the Austrian region of "Styria" (German: Steiermark), was selling chocolate coated pumpkin seeds under the name "Styriagra". Those (oval shaped) Styriagra pumpkin seeds were dyed in a blue colour and offered as natural erectile dysfunction remedy. Mr Mandl had also filed for trade mark protection: International trade mark No. 957917 Styriagra covering class 30 and 31 and designating Switzerland and the European Union based on an Austrian national mark.

Even in those early days, Mr Mandl was adamant that there was no connection between Pfizer's Viagra and his Styriagra pumpkin seeds. His product name derived from the word "Styria" which is the Latin name of the Austrian province Steiermark, where his business is located, and the words "agra" and "Agrar". The latter were meant to be denoting the agricultural and organic origin of his product. Even the choice of the colour blue was coincidental Mr Mandl told the interested readers of Austrian newssite Krone and German newspaper Die Sueddeutsche Zeitung and he revealed that he also offered pumpkin seeds coated in other colours. Pharma giant Pfizer was neither sidetracked nor impressed by this argument, in particular since Mr Mandl's mark also used the colour blue, and early reports suggested that Pfizer intended to take legal action against Mr Mandl.

One year on, the Austrian Oberste Gerichtshof (OGH) has decided (case reference 17 Ob15/09v ). Pfizer had indeed taken the matter to court. While the court of first instance had decided in Mr Mandl's favour, the court of Appeal as well as the OGH found that Mr Mandl's little organic pills had taken unfair advantage of the distinctive character and the repute of Pfizer's Viagra trade mark.

Mr Mandl had used a mark (Styriagra) that was similar to an earlier mark with a reputation (Viagra). Referring to the ECJ's decision in L'Oreal v Bellure, the OGH took the view that Mr Mandl had attempted "to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation" and had unfairly taken advantage of the distinctive character or the repute of that mark.

The OGH also rejected Mr Mandl's argument that "Styriagra" had to be considered as a so-called 'trade mark parody' (Markenparodien), a concept established by the German Federal Supreme Court in the famous purple post card case (Lila Postkarte, BGH case reference I ZR 159/ 02). The German court had decided that trade mark parodies could, under certain circumstances, be considered as satire and thus be protected under the constitutional rights of freedom of art and freedom of expression. In cases of conflict freedom of art/expression have to be balanced with the conflicting trade mark rights. The OGH in principle agreed with the German court's approach. However, while "Styriagra" could be considered as a humorous reference, it was not an expression of artistic creation. Furthermore, Mr Mandl's main motives were clearly of a commercial nature.

The OGH's decision can be retrieved by clicking here (in German).

Further reading: the IPKat recommends Austrian blogger and lawyer Maximilian Schubert's (aka Austrotrabant) detailed review of this case, please click here (in English!).

This Kat can't help feeling a little sorry for Mr Mandl, in particular since news site Krone also reports that Mr Mandl's marriage has broken down over this court case and he only ever sold 1200 units with a turnover of 1824 Euro. Given that the OGH's decision appears to be a preliminary ruling at the appeal stage, further chapters in this slightly surreal dispute can be expected.

7 comments:

Anonymous said...

Did you and Austrotrabant make this case up? This is just so very weird.

Anonymous said...

European Court of Human Right, case of KRONE VERLAG GmbH & Co. KG
v. AUSTRIA (no. 3), judgement 11 December 2003, says:

‘30. The Court reiterates that under its case-law the States parties to the Convention have a certain margin of appreciation in assessing the necessity of an interference, but this margin is subject to European supervision as regards both the relevant rules and the decisions applying them … Such a margin of appreciation is particularly essential in the complex and fluctuating area of unfair competition. The same applies to advertising. The Court's task is therefore confined to ascertaining whether the measures taken at national level are justifiable in principle and proportionate…’

The court found that Austria had violated Article 10 of the Convention.

Perhaps Mr Mandl should let the court ones more take a close look to Austria´s treatment of commercial speech?

Austrotrabant said...

If we were THAT creative I reckon we would make money as artists and story writers instead of staring at laptop screens all day long ;)

Birgit Clark said...

@Anonymous1: we didn't make it up! It is certainly a real case and I agree with Anonymous2 that this is an Article 10 ECHR issue.

Interestingly, under German consitutional law (Article 5(3) Basic Law), freedom of art also encompasses commercial artistic activities and advertisment, which is different to the OGH's position for Austria.

Let's see what happens next...!

Anonymous said...

At this point, when we are on a surreal track (as opposed to the one tracked mind), I am reminded of a case where someone with a more enterprising than legal mind bought large amounts of Fisherman's Friend and dyed these blue. This was sold as Pfizers bestsellers.

Customers apparently was helped to a fresher breath but not much more than that either.

Anonymous said...

Hang on, the Austrian court borrows this German concept but doesn't follow it properly?

Dr. Michael Factor said...

If his marriage failed as a result, perhaps his pills let him down???

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