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 NEW YORK, Jan. 7 /PRNewswire/ -- Sterling Winthrop Inc., the U.S.-based manufacturer of BAYER(R) aspirin, announced today that it is pleased with the decision of the United States Court of Appeals for the Second Circuit in the company's lawsuit against German-based Bayer AG. The Court of Appeals upheld a 1992 finding by the District Court that the German company had infringed Sterling Winthrop's BAYER(R) trademark and trade name. The Court remanded the case for further consideration of the terms of the injunction to be entered against Bayer AG.
 According to Paul A. Soden, vice president and general counsel for Sterling Winthrop Inc., today's decision was recognition of the company's more than 75-year commitment to building its BAYER(R) analgesic franchise.
 "This is an important victory for Sterling Winthrop," Mr. Soden stated. He noted that "the court's decision reaffirms the basic principle of Sterling Winthrop's right to protect the well-known and trusted BAYER(R) name, our valuable good will and reputation from misappropriation by Bayer AG. The remand contemplates that significant permanent restrictions will be placed on Bayer AG's unlawful activities."
 Sterling Winthrop acquired the exclusive rights to the BAYER(R) trademark and trade name in the United States in 1918, when the Alien Property Custodian seized the United States assets of Bayer AG's predecessor during World War I and sold them to Sterling Winthrop at auction. Subsequently, over the course of more than 40 years, the German company made sustained, but unsuccessful, attempts to regain the BAYER(R) trademark and trade name in the U.S. In 1964, however, pursuant to an agreement between the two companies, the German concern finally acknowledged Sterling Winthrop's rights to BAYER(R) in this country.
 Under the terms of a second agreement in 1986, Sterling Winthrop allowed Bayer AG to make very limited use of the BAYER(R) trademark for non-consumer and non-pharmaceutical goods and to use "Bayer USA Inc." as the name of a non-operating holding company. Sterling Winthrop's agreement was coupled with stringent restrictions designed to prevent the "Bayer USA Inc." name from being called to the attention of consumers, the general public or the pharmaceutical trade. In addition, Bayer AG expressly agreed that it would not use either the trademark or the trade name BAYER(R) in communicating with the general public or the pharmaceutical industry by means of institutional or company-identifying advertising or promotions.
 Almost immediately thereafter, Bayer AG, through its United States affiliates, began to make prominent and extensive use of the name "BAYER" in this country, in institutional advertising, medical symposia, billboard advertising, broadcast sponsorship, press releases and other media. These activities continued unabated despite protests by Sterling Winthrop.
 1992 Ruling
 In 1990, convinced that Bayer AG's unauthorized use of the BAYER(R) trademark and trade name was causing significant confusion among consumers, Sterling Winthrop commenced legal proceedings. Sterling Winthrop contended that the German conglomerate's activities violated Sterling Winthrop's trademark rights as well as the contracts between the two companies.
 On May 15, 1992, Judge Robert J. Ward of the District Court for the Southern District of New York upheld Sterling Winthrop's contentions and ruled that Bayer AG had breached its 1964 and 1986 agreements and that its activities also violated the U.S. Trademark Act (Lanham Act), the New York State Anti-Dilution statute and the law of unfair competition. Judge Ward enjoined Bayer AG from continuing its unlawful conduct, stating that "...a broad and stringent injunction is warranted here, particularly in view of defendants' concession that unless enjoined, they will continue to violate their contractual obligations as well as Sterling Winthrop's rights under the Trademark Law."
 The Second Circuit Opinion
 In affirming Judge Ward's 1992 conclusion that Bayer AG violated Sterling Winthrop's rights, the Second Circuit noted that "Sterling has shown a likelihood of confusion arising from Bayer AG's use of the 'Bayer' name and mark" and that Bayer AG had breached its contracts with Sterling Winthrop "by placing advertisements in magazines such as Fortune and BusinessWeek..." The Court went on to rule that the terms of the injunction imposed by Judge Ward should be reconsidered on the basis of further evidence, although it said that the District Court may grant Sterling Winthrop an injunction against uses of the Bayer(R) mark "that are likely to have significant trademark-impairing effects..."
 Mr. Soden stated that Sterling Winthrop was "highly gratified" that Judge Ward's decision has been affirmed. He added that Sterling Winthrop would continue to enhance the quality reputation of its Bayer(R) product line.
 Headquartered in New York City, Sterling Winthrop Inc. is a worldwide developer, manufacturer and marketer of pharmaceuticals and consumer health products. Bayer(R) aspirin and Bayer(R) Select(TM) pain relievers are manufactured and marketed in the U.S. by Sterling Health, a division of Sterling Winthrop.
 -0- 1/7/94
 /CONTACT: Carol J. Perlman, 212-907-2724, or Charles M. Mayr, 212-907-3336, both of Sterling Winthrop, Inc./

CO: Sterling Winthrop, Inc. ST: New York IN: MTC SU:

TM -- NY070 -- 0348 01/07/94 20:35 EST
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Publication:PR Newswire
Date:Jan 7, 1994

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