법무법인(유한) 율촌 | Yulchon LLC

Yulchon’s Healthcare Practice Team and Intellectual Property Practice Group obtained a resounding victory at the Korean Supreme Court on behalf of Hanmi Pharmaceutical Co., Ltd. (“Hanmi”) in a dispute against Pfizer Products Inc. and Pfizer Pharmaceutical Korea Ltd. (“Pfizer”) alleging trademark infringement and unfair competition. 

Pfizer sought to halt the increasing sales of Hanmi’s competing erectile-dysfunction pill, Palpal (a generic version of Viagra), alleging confusing similarity in both shape and color. This trademark case was asserted after the Korean patents covering Viagra were expired.

Despite the Appellate Court’s initially ruling in favor of Pfizer, the Korean Supreme Court reversed the decision to effectively strike down claims of trademark infringement and unfair competition.

 
The genesis of this dispute centered on Pfizer’s argument that the blue diamond shape of its erectile-dysfunction pill, Viagra, was a registered trademark which had allegedly become well-known enough for consumers to potentially confuse Hanmi’s Palpal with its own blockbuster pill. As a result, Pfizer alleged that Hanmi’s manufacture and sale of Palpal constituted trademark infringement and unfair competition due to the negligible differences between the two pills.

Utilizing its expertise in the pharmaceutical industry, Yulchon successfully identified key differences between the two pills, the lack of distinctiveness of Pfizer’s trademark in view of other prescribed pills, and the actual sales transaction involving a pharmacist dispensing a drug prescribed by a physician, where the consumer would not be confused between Viagra and Palpal. 

The firm effectively argued that in Korea, a physician must prescribe the drug by its brand name, and pharmacists are not allowed to substitute a prescribed drug with a generic or vice versa. Furthermore, Yulchon argued that the reference documents and foreign court cases cited by Pfizer were not applicable in this case.

With regard to the alleged similarities between the products and potential for consumer confusion, the Supreme Court accepted most of Yulchon’s arguments and ruled that it is unlikely that consumers will be confused about the source of the products based on the following points: (i) although the shape of the Viagra pill is distinctive and the shape of the Viagra pill and the Palpal pill are similar, there are differences; (ii) both drugs must be distributed by a pharmacist from a doctor’s careful prescription using the actual name of the drug, i.e., either “Viagra” or “Palpal”; and (iii) the outer and inner packaging of both products were clearly identified as “Viagra” and “Palpal” respectively.

This case has set a significant court precedent, because it represents the first time the Supreme Court clearly set forth the standards for determining distinctiveness of a three-dimensional trademark.  In addition, this dispute was closely watched by the news media and the pharmaceutical industry in view of the alleged distinctiveness raised by Pfizer’s three-dimensional trademark, as well as the popularity of Viagra which is prescribed by a physician to treat erectile-dysfunction.