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The application was accepted at an ex parte hearing on condition that Pfizer exclude goods and services for which there was found to be insufficient evidence to demonstrate that members of the public were likely to draw a connection with the applicant. Before restricting the coverage of 769222, Pfizer filed a divisional application (No 894613) covering the goods to be excluded, but later waived its divisional claim so that the date upon which it was actually filed – 9 November 2001 – became its priority date. Thus it had the advantage of a further three years of use of the VIAGRA mark with which to support its claim that members of the public would draw a connection with the applicant by another person’s use of the mark (or a substantially identical or deceptively similar one) in relation to the broader range of goods and services.
While the hearing officer noted that “the evidence suggests most of the Australian population would be aware that VIAGRA is a trade mark used for only a single line of pharmaceuticals”, he was satisfied that the further three years’ use allowed a sufficient connection to be inferred for a wider range of goods and services than had been the case when application 769222 had been filed. A perceived connection might have its basis in licensing, sponsorship or brand extension, or indeed on some other basis provided that the relevant inference is “open to some articulation of the factors (whatever they may be) on which it is allegedly based”.
The broad coverage allowed included:
• gelling and swelling preparations, silicon, chemicals used in industry, and chemical preparations for non-medical and non-veterinary scientific purposes in class 1;
• dental and veterinary apparatus and instruments, and adhesive preparations for surgical bandages in class 10;
• goods and services associated with general well-being, such as sporting articles in class 28;
• physical education, sports facilities services, sports equipment rental and hygienic and beauty care services in classes 41 and 44;
• protein raw material, saccharin and artificial sweeteners in class 1 and various foods and beverages in classes 29, 30, 31, 32 and 33; and
• seeds and malt, live animals, natural plants and flowers, and agricultural, horticultural and forestry products and grains in class 31.
In the hearing officer’s opinion, these were not goods “so far removed from those on which VIAGRA is famous as to give any pause for thought before a connection, of whatever sort, is inferred with Pfizer”, and that there was nothing in the connection to be inferred that “might be described as fanciful or unlikely” (original emphasis). Hence there was now a sufficient connection for the broader coverage.
The hearing officer also noted that VIAGRA is an invented word and, given the extent of its use and the reputation that followed from this, it was difficult to see how any person other than Pfizer could have a legitimate need to use it.
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