Pfizer, the producer of the well known drug “VIAGRA”, registered the mark defensively for class 33 alcoholic beverages. The Applicant (Viaguara S.A of Poland) used “VIAGUARA” in relation to a pre mixed alcoholic drink which contained guarana, an energy boosting plant. The Applicant sought protection of its VIAGUARA mark in Australia and Pfizer opposed under section 44 of the Trade Marks Act arguing that “VIAGUARA” was deceptively similar to its mark. The Applicant contended that the name was coined through the combination of “VIA” and “GUARA” meaning that the drink comes from a place in the Amazon Basin called Guara. This was not accepted. The Hearing Officer found that “via” did not mean “from” and that the place “Guara” did not exist. Even if it did, he did not consider the argument influential in the comparison of the marks as he believed that most Australians would not immediately recognise that the mark could be split that way.
The section 44 test will usually be met where there is a reasonable likelihood of deception or confusion among a substantial number of people. The Hearing Officer noted however, that the Courts will depart from the ‘normal test’ where the mark “is adopted for the purpose of appropriating part of the trade or reputation of a rival” (eg in Australian Woollen Mills, Windsor Smith v Dr Martens). Where this is so, the mark is presumed to be fit for the purpose of appropriating the relevant reputation and is therefore likely to deceive or confuse.
The evidence indicated that the Applicant was well aware of the similarities between the two marks and wished to highlight this. For example, the information page of “VIAGUARA” refers to the “extraordinary power” of guarana as being “used by the American Indians when they desired erotic adventures after a hard working day” because “Guarana increases sexual appetite in both sexes”. The labels on the bottles of the drink also showed stick figures of men with large penile erections. The similar pronunciation of the two marks was another factor in the Hearing Officer’s decision to reject the application.
The decision of the Hearing Officer can be found here.
