Intellectual Property Reporter

June 2007

PFIZER LOSES COURT BATTLE OVER VIAGRA TRADEMARK IN  CHINA

By Alan I. Cyrlin, Esq.

Viagra is one of the most recognized pharmaceutical brands in the world. But, when Pfizer, the maker of Viagra, began marketing its erectile dysfunction drug in China, the pharmaceutical giant came across a problem.

Viagra was facing stiff competition from alleged knock offs. In fact, another company, Guangzhou Welman Pharmaceutical, had cleverly filed a trademark application in the China Trademark Office in 1998 to register the trademark "Weige" and was marketing its own anti-potency pills under the "Weige" brand.

Why did this concern Pfizer? In Chinese, the term "Weige", which translates literally to "mighty brother", sounds similar to "Viagra". Moreover, the mass media and public in mainland China referred to the blue pills as "Weige". Pfizer feared that purchasers of "Weige" would believe that they were buying real "Viagra".

Pfizer was not going to take this lying down. In 2005, Pfizer filed a lawsuit in China against Welman. Pfizer asked the Court to order Welman to cease using the name and award Pfizer damages for trademark infringement.

Under China’s laws, however, Pfizer had to overcome a significant legal hurdle. Specifically, China operates under the "first to file" system. This means that the first to file a successful trademark application will own the mark even if the applicant copied the name from someone else. Unfortunately for Pfizer, Welman had filed a trademark application for "Weige" several years earlier and, in 2002, the China Trademark Office approved Welman’s application.

Under China’s laws, however, there also exists a potentially potent exception to the "first to file" rule. The exception is reserved for "well known" marks. Thus, under a 1992 U.S.-China Memorandum of Understanding on Intellectual Property Rights, as well as part of China’s accession to the Paris Convention in 1985, and China’s internal laws, "well known" marks are given priority against earlier filed registrations. To qualify, the mark must be "widely known" and enjoy a "comparatively high public reputation" in China
(Trademark Law (P.R.C.), 2002, ch. I, art. 13).

Pfizer, thus, argued that "Weige" was a well known unregistered trademark in China.  Consequently, Welman should be prevented from using the name.

In December 2006, the Beijing No.1 Intermediate People’s Court reached a decision. The Beijing Court rejected Pfizer’s argument and ruled that Welman owned and should be allowed to continue to use "Weige".

According to the Court, although the media and public commonly referred to Viagra as "Weige", the use of the term was not made by Pfizer itself. Therefore, "Weige" was not a famous mark owned by Pfizer. Worse yet, the Beijing court determined that Pfizer may not use "Weige" in China to market its medication.

By hindsight, Pfizer might have been able to avoid this problem in the first place by immediately filing trademark applications for all Chinese language translations and transliterations of Viagra. This  prophylactic measure may have prevented Welman from allegedly pirating the Chinese translation of the name.¹

Pfizer’s battle over "Weige" has not ended, however. In February 2007, Pfizer announced that it was appealing. A decision is expected sometime this Summer.

Bibliography

"China: Your company name may not be yours", CNNMoney.com, found at http://money.cnn.com/2006/03/07/news/international/trademark_squatting/index.htm?section=money_latest (last visited June 6, 2007)

"Intellectual Property Rights in China: Background and Figures", The US-China Business Council, http://www.uschina.org/info/china-briefing-book/ipr_backgrounder.html (last visited June 6, 2007)

"IPR Toolkit - Intellectual Property Rights in China",Embassy of the United States in Beijing-China",
http://www.beijing.usembassy-china.org.cn/iprtrade.html (last visited June 6, 2007)

"Pfizer denied right to Chinese name of Viagra", Chinadaily.com.cn, http://www.chinadaily.com.cn/bizchina/2007-02/05/content_801477.htm (last visited June 6, 2007)

"Pfizer files appeal after ruling denies right to Chinese name", ABC Money.com.uk, http://www.abcmoney.co.uk/news/06200718495.htm
(last visited June 6, 2007)

"Pfizer loses Viagra brand battle", BCC News, http://news.bbc.co.uk/2/hi/business/6330943.stm
(last visited June 6, 2007)

1. American companies have at least two avenues available to filing a trademark application in China. First, an organization may file an application directly with the China Trademark Office. Alternatively, an American company may file an application in the United States and then request to extend the protection to China based on the "Madrid Protocol" treaties.