VIAGRA – still going strong

Few brand names in the world enjoy the same level of recognition as Viagra.

The little blue pill has become globally synonymous with the treatment of erectile dysfunction. It's safe to say this brand is a household name across the globe.

As is often the case in legal proceedings, a claimant still has to prove the reputation of the trademark. That requires some homework, because demonstrating the reputation demands solid and convincing evidence. And not every trademark owner manages to get it right. In such cases, it’s frustrating for the trademark owner, but there are still options available—appeals or alternative legal strategies. So a failed claim doesn’t necessarily mean game over.

Things become trickier when the claimant’s own trademark comes under fire—for example, when the opposing party initiates a revocation action on the grounds of non-use. This is a common tactic in trademark disputes: the defendant challenges the validity of the trademark on which the claim is based, arguing that it hasn’t been used for some time.

For the defendant, this has a clear advantage: courts or trademark offices will often pause the main case to await the outcome of the revocation proceedings. And rightly so—if the mark is revoked, the claimant loses its rights, which can completely change the course of the case.

It’s a tactic aimed at delaying the proceedings. And from the defendant’s side, it’s a relatively simple move: file a form, pay the fee, and then the burden shifts to the trademark owner. The owner must submit convincing proof of use within four months. If they fail to do so, the consequences can be serious.

Now, back to VIAGRA. The owner of the trademark, Viatris, was involved in proceedings against a Hungarian company. In response, the Hungarian party filed a revocation action against the VIAGRA mark. So even for a globally renowned brand like VIAGRA, Viatris had to provide proof of use.

Viatris responded by calling the revocation action “outrageous,” arguing that in the parallel proceedings, they had already submitted substantial evidence of VIAGRA’s reputation. According to Viatris, the only purpose of the revocation action was to burden them with additional costs and legal work.

The EUIPO (European Union Intellectual Property Office) disagreed. Revocation actions serve the public interest by keeping the trademark register free of unused marks. That said, the request was ultimately rejected, as Viatris had sufficiently demonstrated use of the VIAGRA mark.

Although revocation is a powerful tool for challenging trademark rights, Viatris’s frustration is understandable. The threshold for initiating a revocation action is currently very low: there’s no need to provide any justification or explanation. The entire burden falls on the shoulders of the trademark owner, who must suddenly gather evidence under tight deadlines.

While we're not necessarily advocating for higher fees, introducing a requirement to submit a short statement explaining the reasons or suspicions behind the revocation could be a fairer approach. Yes, it would require some initial substantive assessment, but it could help prevent misuse of the system.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.