“COVISHIELD” trade mark dispute: Cutis Biotech v. Serum Institute of India

Background

Recently, a commercial court in Pune refused to pass an interim injunction order^[1] to restrain the Serum Institute of India (SII) (defendant)^[2] – the world’s largest vaccine manufacturer, from using the trade mark “COVISHIELD” for its vaccine for the coronavirus pandemic. Cutis Biotech^[3] (plaintiff), a Nanded-based pharmaceutical and medicinal products company operating since 2010, had filed the suit in the civil court on 4-1-2021, seeking to restrain the SII from using the trade mark “COVISHIELD” or any other identical and/or similar name for its Covid-19 vaccine.

Some brief facts and the timeline on how the dispute unfolded when the world was grappling with the deadly coronavirus are enlisted below:

• On 25-4-2020, the plaintiff coined the word “Covishield” and decided to use the same in respect of pharmaceutical and other related products.
• Thereafter, the plaintiff conducted a trade mark search for “Covishield” in Class 5 category of goods in the trade marks register. Consequently, as there were no pre-existing marks found in the trade marks register, the plaintiff went ahead and applied for the registration of trade mark “Covishield” on 29-4-2020, in respect of “veterinary, ayurvedic, allopathic, medicinal and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals” bearing Application No. 4493681 in Class 5 on a “proposed to be used basis” in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra.”
• The plaintiff also applied for registration of the mark ”COVID SHIELD“ bearing Application No. 4509144 in Class 5 on 24-5-2020, with regards to “medicinal and pharmaceutical preparations for human purpose” in Class 5 in the name of Mr Bandaru Srinivas.
• The plaintiff started selling their products in the market from 30-5-2020, to which they submitted evidence in support of their claim of commercial use such as invoices, photographs, e-mails, etc.
• On 6-6-2020, the defendant applied for the trade mark “Covishield” in the same Class 5 bearing Application No. 4522244 for the product i.e. vaccine for human use.
• On 20-6-2020, the plaintiff filed another application for the mark “COVID SHIELD“ bearing Application No. 4538555 in Class 5 covering “hand sanitizers being goods included in Class 5” in the name of Mr Bandaru Srinivas.
• On 15-8-2020, one of the trade partners of plaintiff i.e. Indo Rama Engineers^[4] denied to supply multivitamin injection to the plaintiff under the brand name ”Covishield” as there was a possibility of confusion — as claimed by the plaintiff.
• On 7-12-2020, the plaintiff came to know through news media channels that the defendant has applied for an identical/similar mark before the Drugs Controller General of India for the approval of a vaccine used for preventing the disease Covid-19, under the brand/trade mark, namely, “Covishield”.
• Thereafter, on 11-12-2020, the plaintiff filed a suit against the defendant before the District Court at Nanded, to which the defendant raised an objection on the ground of jurisdiction. That suit is still pending at Nanded Court. The suit sought the following prayer:

“Pass a decree for a perpetual injunction may kindly be issued restraining and prohibiting the defendants or any other persons claiming through them from passing off medicinal and pharmaceuticals, allopathic, veterinary, ayurvedic preparations or products for human use and animals as well as vitamins and dietary supplements for humans and animals under the trade name ‘COVI SHIELD’ as well as the trade mark ‘COVID SHIELD’ which is identical or similar to the plaintiff’s trade mark ‘COVI SHIELD’.”

• Following which, the plaintiff applied for the mark “Covishield” on 12-12-2020, in the name of one “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra”, claiming use since 30-5-2020.
• The plaintiff contended that, a fresh cause of action to file present suit had arisen on 2-1-2021, when the plaintiff came to know through the website, that the Director of the defendant company Mr Poonawalla made an announcement to launch the vaccine to prevent Covid-19 under the brand name “Covishield”.
• The plaintiff approached this Court by filing the present suit on 4-1-2021.

The details of the marks^[5] as filed by the plaintiff in the name of “Mrs Archana Ashish Kabra w/o Mr Ashish Nandkishor Kabra” and “Bandaru Srinivas” and the marks filed by the defendant are given below:

After setting forth the background and conceptual underpinnings, I shall throw some light upon the various contentions made by both the parties.

Arguments made on behalf of the plaintiff

• Both the parties trade in a common field of activity i.e. same trade channels.
• The defendant is using a similar and/or identical trade mark “Covishield”, which has been in use by the plaintiff prior to that of the defendant’s mark. Therefore, plaintiff is the prior user and has prior rights to the mark “Covishield”.
• The act of the defendant is of misrepresentation and being deceitful to the customers/consumers in the market. Due to this fact, dealers/distributors are not ready to sell/procure their product; thereby plaintiff has suffered irreparable  losses.
• The defendant has acted in a manner that has caused harm to the reputation and goodwill of the plaintiff; thereby passing off their trade mark “Covishield”.
• The plaintiff has already manufactured and started using the trade mark ”Covishield” as opposed to the defendant.
• The plaintiff has no objection with regard to selling of the vaccine by the defendant to provide a cure; but has an objection only as regards the usage of the trade mark “Covishield”.

Arguments made on behalf of the defendant

• The plaintiff has no prima facie case, as it is not manufacturing any vaccine for human use, so much so that it does not provide a cure to prevent Covid-19.
• The defendant is engaged in manufacturing a vaccine for preventing Covid-19 for human use and has applied for the registration of trade mark ”Covishield” for the said vaccine. While on the other hand, the products of plaintiff relate to “antiseptic, disinfectant liquid for first aid, medical and personal hygiene, hand and vegetable washing liquid, surface decontaminant, etc.” and has no connection with the “vaccine for human use”, in any manner whatsoever.
• Though, the goods/items mentioned by the plaintiff and the defendant fall within the same category i.e. Class 5 goods, the visual appearance and the purpose/intent of the plaintiff’s product when compared with the defendant’s product is totally different, thereby, creating no possibility of any confusion in the minds of an ordinary person of average intelligence having imperfect recollection. Hence, there is no deception or misrepresentation on the part of the defendant.
• The defendant intends to manufacture the vaccine for human use only in order to prevent Covid-19. Therefore, there exists no common nature of activity between the plaintiff and defendant company.
• The plaintiff entered in the market back in May 2020 and has not achieved substantial goodwill or reputation of such nature as claimed by them that the defendant can take any undue advantage of.
• The plaintiff concealed a very pertinent/material fact and document that it had applied to the Trade Marks Registry on 12-12-2020 for the registration of trade mark ”Covishield” bearing Application No. 4778455 for “vaccine for human use” as well in addition to other goods, thereby did not approach the court with clean hands amounting to fraud.
• The defendant company has been in the process of manufacturing a cure to prevent a deadly disease i.e. Covid-19, and is presently in the process of supplying the human vaccine under the trade mark ”Covishield” to the Government of India and has commenced exporting it to many other countries around the world as well.
• If the restraining order is passed by the Court against the defendant, it would cause immense hardship to the consumers in India and abroad.
• The defendant strongly relied upon the following case laws wherein the Supreme Court has discussed about the test of deceptiveness and confusion.

(1) Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.^[6]; and (2) Vishnudas v. Vazir Sultan Tobacco Co. Ltd. ^[7]

• “Once a registration of trade mark is granted for a product in a class, it does not mean that, the proprietor of such trade mark gets the monopoly for the entire class.”
• “When the visual appearance of the trade marks of plaintiff and defendant are different, when the products are for different purposes and it does not create any confusion in the mind of average man of ordinary intelligence, then it is not deception or misrepresentation.”
• “Mere test of prior user is not sufficient, but since how long the product of the plaintiff is in market is also very important; whether there is injurious fraudulent intention or unfair trade on the part of defendant and whether there is intention to deceive the customer. If no such intention is there on the part of defendant, then merely plaintiff is prior user of the trade mark cannot be the sole basis for grant of injunction. R. Dongre v. Whirlpool Corpn.^[8]”

Key observations of the Court

1. Prima facie, visual appearance when compared as a whole — the products are totally different.
2. No prima facie intention seen on part of the defendant to create confusion or misrepresentation and further, there seems to be no likelihood to cause injury or divert business of the plaintiff, or harming the reputation and goodwill of the plaintiff. Hence, the defendant’s product does not cause confusion or misrepresentation.
3. The ratio decided in the case laws cited e. Nandhini Deluxe[9] and Vishnudas[10] shall certainly prevail and be recognised as the law of the land as applicable to the facts and circumstances of the case in hand.
4. The plaintiff cannot have monopoly over the trade mark “COVISHIELD” for the entire class of goods.
5. Presently the Government of India is the buyer of the product of defendant, in India which indicates that it is being made available through government channels. Therefore, the class of consumers buying the products are totally different and as such the plaintiffs have no buyers or exporting their products abroad. On the contrary, the defendant is exporting the product in foreign countries as it is a vaccine to prevent Covid-19. Therefore, the question of misrepresentation or causing confusion in the minds of an ordinary person of average intelligence having imperfect recollection does not arise.
6. It is a much desirable and awaited product by people all over the country and around the world. If, at this stage, defendant is restrained from using/distributing/manufacturing the vaccine under the said impugned trade mark “COVISHIELD”, it would cause great hardship to the people. Therefore, comparative hardship and balance of convenience certainly lies in favour of the defendant.
7. The subsequent application dated 12-12-2020, filed by the plaintiff for registration of the trade mark ”Covishield” for vaccine for human use and other purposes, is of relevance and a fact that should have been pointed out by the plaintiff before this Court. Thus, the plaintiff has not approached this Court with clean hands.

My view

The Pune District Court has done an admirable job in dealing with the case in hand and has opined its view after scrutinising various facts, arguments, evidence, established precedents on the subject with aplomb in turn providing a roadmap with an increased awareness and understanding of the concepts of passing off and striking the right balance in examining the issue at hand which was much needed to reignite the trade mark law consciousness in the country in these troubling times and that too pertaining to the much awaited and talked about vaccine in India and around the world.

In simple words, Cutis Biotech has not gained much significance among the consumers at large or for that matter acquired any secondary meaning in the mark “COVISHIELD” i.e. acquired distinctiveness — when their product/brand name becomes synonymous in the public mind through long, continuous and uninterrupted commercial use in the market.

However, both the companies can co-exist in the trade marks register in Class 5 and attain registration only if they enter into a co-existence agreement, if the need arises, or register with different set of goods as claimed with actual use within the same Class 5 and/or battle it out in the court of law, if one party is adamant in enforcing their right to exclusive use/monopoly of the mark. Any which way, that will be time consuming and an inconsiderate view to take as greater public good is in question which shall always prevail. It is a reminder that we need to never lose sight of the big picture. In summary, the order is a worthy addition to the domain of trade mark law.

*Yashvardhan Rana, Intellectual Property Lawyer, Esteemed Member, FICCI IP Forum. He can be contacted at  yash0843@gmail.com.

^[1]  <https://services.ecourts.gov.in/ecourtindia_v4_bilingual/cases/display_pdf.php?filename=/orders/2021/210100000012021_1.pdf&caseno=Commercial%20Suit/1/2021&cCode=1&appFlag=web&normal_v=1>.

^{[2] https://www.seruminstitute.com}

^{[3] http://www.cutisbiotech.com}

^{[4] https://www.indoramapharma.com}

^{[5] https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx}

^[6] (2018) 9 SCC 183.

^[7] (1997) 4 SCC 201.

^[8] (1996) 5 SCC 714.

[9] (2018) 9 SCC 183.

[10] (1997) 4 SCC 201.