The Austrian Supreme Court found in its “Styriagra” (OGH, 22.09.2009, 17 Ob 15/09v) decision that the sale of pumpkins seeds, covered in a blue sugar coating and sold under the Austrian trade mark “STYRIAGRA” infringes Pfizer‘s trademark rights in its Community trademark “VIAGRA”. The decision deals with trademark aspects, as well as with a human rights argument:
It should be pointed out for all non Austrian readers that a: the natural shape of a pumpkin seed quite closely resembles the shape of Pfizer’s “little blue bill” and that b: there is something like a “rural legend” in Austria that the consumption of pumpkin seeds increases a man’s sexual “performance”.
Trademark aspects: Although the Court of first instance found that the sale of the blue pumpkin seeds under the TM Styriagra does not affect the reputation of Pfizer’s trademark, the court of appeal as well as the Supreme Court found a trademark infringement on the basis of Art 9 (1) c Community trade mark Regulation (40/94) and Art 5 (2) Trademark Directive (89/104), as the defendant undoubtedly used a sign similar to the trademark with a reputation of the plaintiff.
The court, referring to the ECJ’s recent L’Oréal decision(C-487/07), highlighted that it is not enough in the context of Art 5 (2) that the public establishes a link between the sign and the mark (para. 37) and elaborated on the decisive question of whether the use took “unfair advantage of, or is detrimental to, the distinctive character or the repute of the [...] trade mark“. The court in this respect cited paragraph 49 of the aforementioned decision, stating that the attempt of the defendant “to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation [...] must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark“.
The court concluded that this was exactly what happened in the case at hand and that the defendant unfairly used the reputation of Pfizer’s TM.
Fundamental/Human rights argument: The defendant furthermore referred to the Lila Postkarte (03.02.2005, I ZR 159/ 02) decision by the BGH. In this decision the BGH found a postcard which used in the colours of a chocolate manufacturer and even is TM in the text on the card in a admittedly “funny and humoristic” manner, to be a work of art and thus protected by the freedom of speech/art subsequent to Art 10 ECHR. (to see an image of the postcard click >>here<<)
After considering the arguments brought forward in the German BGH decision and the subsequent German literature, the Austrian Supreme Court finally concluded that the term “Styriagra” does not constitute a work of art and that it was furthermore not primarily aiming to inspire a critical / satirical or ironic public discourse on the issue of the chemical effect of Pfilzer’s drug, but mainly to support the sales of the defendant.
Conclusion: What makes the case interesting nevertheless is the huge level of public attention it has received in Austria and one might wonder whether the image loss of Pfizer might actually be justified by the possible negative effects of an farmer/retailer (Richard Mandl) in the countryside painting his pumpkin seeds blue and selling them under a “fun-trademark“. According to the defendant, he has only sold about 1200 packages of the blue seeds and made only a total turnover of only 1.824 EUR.