VIAGRA PROVES FERTILE GROUND FOR TRADE MARK OPPOSTION

The IPKat brings you a UK Trade Mark Registry decision involving everyone’s favourite pharmaceutical, emphasising the importance that aural similarity can play where goods are ordered by phone. Glenside applied to register BI-AGRA in Class 1 for various agricultural chemical products and fertilisers. Pfizer opposed the application, based on its earlier VIAGRA mark, which was registered for various industrial chemicals, as well as chemicals used in the pharmaceutical industry, arguing that there was a likelihood of confusion between the two under s.5(2)(b) of the UK Trade Marks Act, particularly because of the high degree of aural similarity between the two. Glenside countered that the first letters were different, there was a hyphen in its mark and that two marks were conceptually different, meaning that there was no likelihood of confusion.

The opposition was successful:
♦ The goods were identical or closely similar since the goods that the mark were applied for were included within Pfizer’s registration.
♦ Pfizer’s VIAGRA mark was an invented word and therefore was highly distinctive, even though no use of it had been made in relation to Class 1 goods.
♦ There was a limited amount of visual similarity between the two marks. Both marks were composed of six letters and had the last five in common. However, the different first letter was readily apparent on the printed page and the effect of the hyphen in splitting Glenside’s mark in two could not be ignored.
♦ Aurally there was a high degree of similarity between the two marks. The difference between a “b” and “v” sound is slight and the two would be difficult to distinguish allowing for normal imperfections of speech. While precise and careful articulation might emphasise the difference between the two marks, this was unlikely to happen in a normal trading situation. Moreover, contrary to Glenside’s contention, according to a normal pattern of speech, there would be no pause between the elements of BI-AGRA.
♦ The position on conceptual similarity was broadly neutral. BI is not an accepted abbreviation for biological and while it can mean two, this meaning had no obvious significance in relation to the rest of the mark. AGRA may or may not be taken as alluding to agriculture. However, the point was of limited importance because consumers do not approach marks in the spirit of analysis. They are unlikely to dissect such marks. On the whole, conceptual considerations are less important with invented words of this kind than they would be in the case of marks consisting of or made up from known dictionary words.
♦ The goods were industrial consumable items likely to be sold in large quantities (e.g. one of the products was sold in 18 litre containers) and thus could be the subject of telephone ordering and re-ordering by farmers, rather than by personal visual inspection. Thus, even if they were sold on a business-to-business basis to informed and knowledgeable consumers, oral ordering would play a large part in the sales process.
♦ There was a likelihood of confusion. Confusion can be found on the basis of aural similarity alone (or, in other cases, conceptual or visual similarity alone). Here the fact that the goods would be ordered by telephone meant that aural similarity was particularly important and this, together with the fact that the earlier mark was highly distinctive and the goods were identical or very similar meant that there was a likelihood of confusion under s.5(2).

The IPKat says that although this case doesn’t say much that wasn’t said in the ECJ’s Lloyd/Loint’s case, it is a reminder that not all of the “holy trinity” of visual, aural and conceptual similarity need to be present in a case, and that the method by which the goods in question are to be sold can be crucially important.

How to make your own fertiliser here and here
More aural confusion here