LEGAL BATTLE FOR TRADEMARK “COVISHIELD”

Covid-19 vaccine ‘Covishield’ has been in headlines from past several months in India and it is again in headlines due to legal battle initiated by Cutis Biotech against Serum Institute of India Pvt. Ltd. Recently, Cutis Biotech (hereinafter referred to as Plaintiff) filed a commercial suit in a Civil Court, Pune along with an injunction application towards seeking temporary injunction in order to restrain Serum Institute of India (hereinafter referred to as Defendant) from committing the act of passing off as well as to the use of the trademark ‘Covishield’.

The Plaintiff claimed that on 25.04.2020 they coined the word ‘Covishield’. In order to obtain statutory rights, the Plaintiff has also filed the trademark application on 29.04.2020 and started the use of the same in respect of pharmaceuticals and other related products.

When the Defendant announced that they are launching a vaccine to prevent Covid-19 under the brand name ‘Covishield’, the Plaintiff approached the Civil Court along with an interim injunction application alleging passing off by the Defendant and pleaded that both Plaintiff & Defendant are trading in the common field of activity wherein the Defendant is using the trademark ‘Covishield’, which was adopted by the Plaintiff prior to the Defendant.

The Defendant appeared before the Civil Court and filed a detailed reply to the application of the Plaintiff seeking temporary injunction, which are as follows:-

• That the Plaintiff is not manufacturing any vaccine for human use and they applied for the products related to disinfectants spray, sanitizer etc. in Class-5.
   
• That the vaccine manufactured by them is only for human use and there is no common nature of activity between Plaintiff and Defendant Company. Hence, the nature of the product and visual appearances are also different.
   
• That the Plaintiff entered the market in May 2020 and it cannot be said that they earned substantial goodwill or reputation of such nature that the Defendant is taking due advantage of it. Hence, the basic ingredient of passing off was missing in the instant proceedings.
   
• That the vaccine ‘Covishield’ is a preventive medicine against Covid19 and it is available in India as well as abroad. In case, the restraining order is passed by the Court, it is not only going to affect the consumers in India, but also abroad.
   
• That the Plaintiff concealed the material fact that they have applied a subsequent application for the mark ‘Covishield’ dated 12.12.2020, wherein they have changed the description of the goods/services and added vaccine for human use also.

After hearing both the parties, the Hon’ble Court held that the Plaintiff could not prove the prima facie case of trinity of passing off a trademark i.e. goodwill of the Plaintiff, misrepresentation by the Defendant and damages to the Plaintiff and thus there lies no balance of convenience in favour of the Plaintiff. The Hon’ble Court rejected the application of interim relief as it was observed that the Defendant’s vaccine is for human use and if the Defendant is restrained from using & distributing the vaccine under the trademark ‘Covishield’, it would be difficult for people to identify the much awaited covid-19 vaccine.

The Hon’ble Court further relied on the test of deceptiveness and confusion, as discussed by Hon’ble Apex Court in case of Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd. [AIR2018SC 3516] observing that even though the Plaintiff has got the registration of trade mark for products or goods in a category falling under one class; it does not vest monopoly over the entire class of the goods with the proprietor of such registered mark. The Court also considered the surrounding circumstances that the Government of India is the buyer of the Defendant Company in India and therefore, the class of customers are totally different.

In addition, the Hon’ble Court also observed that the Plaintiff has concealed the material fact of filing of another application dated 12.12.2020, hence the prima facie approach of the Plaintiff to Court with clean hands, is seen to be doubtful. Thus, the Hon’ble Court dismissed the application of the Plaintiff by saying that no prima facie case has been made out for passing off the trademark.