Of Pills and Pumpkin Seeds: Pfizer Sues the Candyman
In mid-November, Pfizer filed suit seeking €36,000 in damages from Richard Mandl, an Austrian candy maker and pumpkin seed oil producer, for infringement of its Viagra mark. Pfizer claims that Mandl's light blue, oval-shaped, sugar- and chocolate-coated pumpkin seeds named "Styriagra" too closely resemble Viagra in name, shape, and color. To compare appearances, see Viagra here:
http://ca.news.yahoo.com/s/afp/081115/oddities/austria_pharma_offbeat, and Styriagra here:
Mandl says that the name Styriagra is a combination of the words "Styria," the Austrian province that is the source of Mandl's pumpkin seed oil (and presumably, his pumpkin seeds), and "agra," a reference to agricultural products. According to him, the oval shape is simply the natural shape of the pumpkin seeds, and blue was the only color he had not yet used for his 26 other flavors of candy seeds. Oddly, the chocolate-coated seeds come up as "pills" on Mandl's Google-translated webpage, but that's probably the result of Google's imperfect translation feature. The product is called "dragee" on the website's own English version, and, interestingly, the "Styriagra" candy only shows up on the German order form, not the English one-perhaps a testament to Pfizer's overbearance. Mandl has registered "Styriagra" in the EU.
Pfizer's vigilant protection has probably over-extended itself here. The only thing Pfizer really has going for it is the strength of the Viagra mark. The marks are similar in sight only because of the "iagra" letter combination; "Styriagra" has an additional syllable and, although I don't have a pronunciation guide, is probably pronounced "Sty-REE-agra"; and the translation of "Styriagra" has nothing to do with erectile dysfunction. Mostly, though, pharmaceuticals and pumpkin seeds are totally different products. What are the odds that someone with a prescription for Viagra would purchase a bag of pumpkin seed candy either accidentally or as a substitute? Not great. Pfizer would fail a "proximity of the goods" test because the products are so different that one can hardly narrow the "relevant" consumer beyond "one who wants to buy small, semi-oval blue items." Although Mandl touts the seeds' medicinal properties in preventing bladder and prostate problems, it is still improbable that even the most careless consumer would mistake the candy for a prescription drug. If the ultimate touchstone is likelihood of consumer confusion, Pfizer falls flat.
A couple of interesting questions remain, though:
1) If Pfizer claims that its rounded-diamond shape is a protectable, non-functional element, could Mandl argue that oval shape does not infringe because it IS functional, simply the shape of the seeds themselves? Why should Mandl have to create an arbitrary shape that would likely create costs for him?
2) If Mandl tried to register "Styriagra" in the U.S., would the mark fail the § 2(e)(2) test for a mark that is primarily geographically descriptive? Under the Baikalskaya case, he would have a challenging case because "Styriagra" would translate literally as "agricultural products from Styria," which meets both prongs of the § 2(e)(2) test: a geographic term and a goods/place association. Although the § 2(e)(2) argument would hinge somewhat on consumers' knowledge of "Styria" as a geographical location, Mandl's defense in the Pfizer suit might be the bar to a U.S. registration.