I never thought I?d be writing about a Viagra IP case in 2012. I?ve literally been talking about a variety of patent and trademark disputes involving this product since at least 2000. It?s been a decidedly bumpy ride.
The latest is not exactly earth-shattering news, but seeing as it fits together nicely with other trademark cases I?ve been talking about lately, including Herm?s,?Michael Jordan and Chivas Regal, I thought it was a good idea. For the record, yes, this is another trademark squatting case.
The facts: in 2003, a Shenzhen electrical goods company called Ying Jia applied for the ????LittleViagra? trademark for certain kinds of electronic products (presumably in Class 9, in which they own a couple other marks). Pfizer opposed the registration, and the decision went to the Trademark Review and Adjudication Board (TRAB), which eventually ruled in favor of Ying Jia. Pfizer appealed that decision, and the Beijing First Intermediate Court, which handles all TRAB appeals, upheld the administrative decision. (This was reported locally here yesterday and today, although I do not have a specific date on the ruling. If I?ve somehow stumbled on an old dispute, consider this post an historical case study instead of news!)
Pfizer registered the ?Viagra? mark in China in Class 5 (pharmaceuticals) but not Class 9. You?ll notice that I haven?t yet mentioned the ????? part of Ying Jia?s trademark ? more on that later, it?s a bitch of a story to explain.
So Pfizer has a mark in Class 5 and Ying Jia is trying to file a functionally identical mark in Class 9. By now, you probably know what happens next. Pfizer has to argue that it deserves expanded protection on account of the mark having well-known status. This is exactly what was argued in the Herm?s?and Chivas Regal cases.
And like those disputes, Pfizer lost here, with the court saying that: 1) it did not find Pfizer?s evidence of well-known status to be sufficient; and 2) it did not believe that there was a significant risk of consumer confusion.
Since I?ve written about the first issue, well-known status and evidentiary challenges, several times before, let?s just look at this issue of consumer confusion. Here we had a pharmaceutical product used to treat impotency (I?m old school with the terminology) on the one hand, and computer peripheral devices (e.g. printers) on the other. Not only did Pfizer have to show that customers in that sector were aware of the ?Viagra? brand, but also that they would be confused as to the origin of the electronic products, mistakenly believing that Ying Jia had some connection to Pfizer.
There are some other trademark theories, such as dilution, that were not discussed in the press reports. It would be interesting to know whether Pfizer could have used such an argument or whether it would have been a moot point given its problems with well-known status. Anyway, no need to complicate this post further, because we?re about to get to the real weird stuff.
In China trademark circles, Viagra/Pfizer is known as the poster child for foreign companies that failed to register Chinese-language trademarks. If you wondered why Pfizer had to argue its well-known status based on its English mark ?Viagra,? it?s because Pfizer doesn?t actually own the commonly-used Chinese language name ???? (wei ge ? big brother), in China. Lots of other companies registered it first, even before Pfizer introduced the product to the Mainland in 2000. If you go to the Trademark Office database and do a search for ???,? you?ll find a whole lot of folks who own that mark, including many in Class 5. Ouch.
Seriously, go do a search. It?s fun, and you?ll see lots of entertaining ???? combo marks, including words like ?VIGA? (which sounds vaguely dirty to me), ?VIGOUR,? ?WEIBROTHER,? ?VIAGRLY,? and (my favorite) ???? VIAGRA CONDOM? ? that last one just sounds dangerous.
Viagra is known as ???? in China, so any discussion of well known status that begins and ends with the English mark ?Viagra? is going to be problematic. Pfizer has been playing catch-up with this product?s IP from the beginning, although it has been successful in terms of patent and 3D trademark (the triangular shape of the tablet). But when it comes to the Chinese name, the IP dispute has been FUBAR.
Consider that if you do some searches in Chinese for Viagra, you?ll generally get hits on ???.? If you go to the Pfizer site here, you?ll see lots of information about ????? (wan ai ke, Viagra?s official Chinese name). Pfizer has registered ????? in quite a few Classes (I counted seventeen, including Classes 5 and 9).
But wait. There?s also ????? (wei er gang, Viagra?s name in Taiwan) ? are you confused yet? Pfizer registered this mark in several Classes in China as well, mostly combo marks that included the Chinese characters and English word. Tragically, although these were filed in May of 1999, Pfizer did not file the ???? mark as well. Epic fail.
So there you have it. In part because of a failure to apply for a Chinese name in 1999 that the public had already adopted, Pfizer lost a case in 2012. So another trademark squatter wins. And let?s not get into a discussion of who is the ?good guy? and who is the ?bad guy.? Pfizer made a mistake over a decade ago, and this squatter took advantage of it. I assume no one out there is going to argue that Ying Jia?s use of both ?Viagra? and ???? in the same application was a happy coincidence.
On a final note, I?d just like to say that I just wrote over 900 words about Viagra with nary a limp dick joke or stupid headline pun. We strive for excellence here at China Hearsay. If anyone chooses to re-post this with a sophomoric headline (I?m looking at you, Business Insider), I will not be held responsible.
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Post tags: Pfizer, trademark infringement, trademark squatting
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