威而鋼 as a defensive trademark denied for being same as a biotech company name; Pfizer Inc acts against the IPO
E020302X2 Apr. 2002（E32）
For the three words 威而鋼 (Chinese translation of Viagra), Pfizer Inc brought a suit against the IPO of MOEA yesterday (Mar. 1).
The name 威而鋼 is well known in the field of pharmaceutics, and Pfizer Inc has acquired the exclusive rights to 威而鋼 registered and approved as a principal trademark as early as 1988. However, such exclusive trademark rights only extend to pharmaceutical products. In order to prevent products like beverages and make-up from using the same name and, thus, leading consumers to wrong associations, Pfizer Inc has been filing for registration of 威而鋼 as a defensive trademark for use on various products since the end of 1999.
However, in 1998, an enterprise had registered itself under the name "威而鋼 Biotech Corp. Ltd." (威而鋼 Corp.), of which scope of business covers several products - foods and beverages included. Therefore, Pfizer Inc's application for registration of the defensive trademark using 威而鋼 was, at the end, denied by the IPO. After appeals failed, Pfizer Inc could only resort to administrative proceedings with the high administrative court.
The Chinese trademark 威而鋼 is registered by Pfizer Inc with the IPO, while the company registration of 威而鋼 Corp. is made with the Commerce Dept. of MOEA. However, in terms of protective trademark, the company registration of 威而鋼 Corp. predates Pfizer Inc's trademark registration, and Pfizer Inc did not acquire 威而鋼Corp.'s prior consent before filing the trademark application. Therefore, it is possible that Pfizer Inc won't be able to hold exclusive right to the name 威而鋼.
IPO points out that 威而鋼 Corp. and Pfizer Inc happen to sell same or similar products, despite the former's company registration is made with Commerce Dept of MOEA and the latter's trademark registration with the IPO. When a trademark design is the same as a firm name, interested party may apply with the IPO for a review for the invalidation of that trademark according to Article 37 (11) of the Trademark Law.
Source: Liberty Times 03/02/2002
