NO SPECIAL TRADE MARK TREATMENT FOR PFIZER’S WONDER DRUG
Title: NO SPECIAL TRADE MARK TREATMENT FOR PFIZER’S WONDER DRUG , Managing Intellectual Property, 09605002, Oct98, Issue 83
Section: NEWS
INTERNATIONAL
Frank Dobson is not a happy man. The UK Minister of Health’s reaction to approval of the anti-impotence drug Viagra by the European Medical Evaluation Agency (EMEA) in mid-September was something less than ecstatic. Estimates that Viagra could cost the country’s National Health Service between £ million and £150 million per year ($80 million to $215 million) have led Dobson to restrict the ability of doctors to prescribe the drug: “Media coverage to date has created expectations that could prove a serious drain on the funds of the NHS. I cannot allow this to happen.”
No doubt, one thousand miles to the south the pharmacists of Andorra are equally disappointed by the EMEA’s decision. Before the Agency cleared Viagra for sale in the European Union, the tiny Principality was the only place in western Europe where people could buy the drug. And they did, in huge numbers. Says David Betbese of patent and trade mark agents SPI: “The queues of cars driven by prospective purchasers of Viagra coming from both France and Spain have been incredibly long.”
Andorra is no stranger to consumer tourists. Although its permanent population is a mere 65,000, 10 million people visit every year, mainly to take advantage of the ski resorts and a duty free tax regime. Top of the incomers’ wish lists at any normal time would be electronic equipment, perfume and cosmetics, all available at much lower prices than in the north east of Spain and the south of France, the Principality’s main catchment areas. But the thousands who have been crowding the kilometre long main street of capital city Andorra La Vella in search of Viagra are not so concerned with getting a good price. They have been willing to pay whatever is necessary to get the product of their dreams. “Customers are being charged $490 for a container holding 30 Viagra pills,” states Betbese.
Given the demand for the drug in the United States, the rush of middle aged European men to Andorra comes as no surprise. Pharmaceutical industry analysts are predicting that Viagra’s manufacturers Pfizer can expect to make $1 billion worth of annual sales of the drug after 2000. Already Viagra accounts for eight out of 10 impotence prescriptions in the US, according to statistics released by research company IMS America. Yet, says Pfizer’s senior corporate trade mark counsel, Arthur Silverstein, the company did not treat the trade mark registration process for Viagra any differently than normal: “It was the same as with any other drug. We began registering in December 1995 in a number of European countries, in Latin America and in the Far East” The company now has well over 50 registrations for the Viagra trade mark and many other applications are pending.
The unprecendented global coverage given to Viagra means that Pfizer is having to deal with what Silverstein estimates as “many hundreds of infringments all over the world”. He says that these typically fall into three main areas: primarily in the US, there have been a number of cases where similar marks are being used on herbal remedies which claim to have the same effects as Viagra. Names used include Vaegra and Viagro; many companies have also used the Viagra mark and images of the trade dress in promotional material designed to imply a connection between the advertiser’s products and the perceived properties of the Pfizer drug; and finally many organizations are using the Viagra brand name, or a similar one, on products totally unrelated to pharmaceuticals.
Silverstein confirms that it is his company’s policy to clamp down aggressively on anyone who infringes the Viagra name: “Viagra is an extremely valuable trade mark. We have invested a lot of time and money in its research and development, and the Viagra brand has a great deal of goodwill. It is a serious medicine for a serious medical condition.” Often, he says, problems occur because people are ignorant of trade mark law. In such cases, the activity stops very quickly once Pfizer gets in touch. But, Silverstein confirms, a few legal actions are pending against others who he sees as deliberate infringers.
Paul Walsh, head of the brands group at London firm Bristows, believes that the Pfizer strategy is exactly right: “It is vital to have a vigorous trade mark enforcement policy. It keeps the competition off your back and it also prevents your product becoming genericized.” To do this the company must be seen to crack down on infringement in all its forms. And it is genericization, Walsh stresses, which Pfizer will fear most: “The company is first on to the market with an impotence treatment of this type and they have a major opportunity to establish brand loyalty before the patent expires.” But if the name Viagra becomes associated with impotence treatments in general, that would not be possible and the company’s market share in the area would be considerably reduced. “Pfizer’s over-riding objective,” says Walsh, “will be to use its intellectual property rights to stay in pole position.”
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Source: Managing Intellectual Property, Oct98 Issue 83, p8, 1p
