Bombay High Court Rejects Plea To Restrain Serum Institute of India from using 'COVISHIELD' Trademark For Its' Vaccines
The Bombay High Court (HC) in the case titled Cutis Biotech (Appellant/ Original Plaintiff) v. Serum Institute of India (Respondent/ Original Defendant) refused to restrain Serum Institute of India (SII) from using the mark 'COVISHIELD' for its vaccine. as SII had acquired enough goodwill, and that discontinuing the name would create confusion and disruption in the vaccination program.
The HC division bench comprising of Justices Nitin Jamdar and C V Bhadang dismissed an appeal filed by pharmaceutical firm Cutis Biotech claiming the trademark of the name 'Covishield' and seeking a direction to SII to stop using the name for its COVID19 vaccine.
The appellant alleged that the said mark is the same as to their trademark and they are using the same for a long time. The appellant has been selling pharmaceutical products, seeking a temporary injunction against SII to prevent it from using the trademark 'COVISHIELD'.
The appellant had applied for registration of trademark 'COVISHIELD' on 29 April 2020 and on 12 December 2020 for vaccines, whereas, SII applied for registration of trademark 'COVISHIELD' for the vaccine on 6 June 2020.
The contention of the appellant was that there is a large chance of confusion between their products and SII. It further stated that the suppliers of Cutis had allegedly stopped supplying goods to them which was causing damage to them and impairing their growth.
The appellant further stated that from 30 May 2020 to 31 December 2020 its turnover was Rs. 16,00,152 and it spent Rs. 1,22,500 for the advertising of its products. SII opposed the plea contending that it had coined the mark 'Covishield' in March 2020 itself.
The respondent mentioned that the Union Ministry of Health and Family Welfare published the COVID-19 vaccine procedure which referred to SII's trademark of 'COVISHIELD' in collaboration with an agency named AstraZeneca for Phase-II/III stage.
An appeal was filed before the HC against the order of a Commercial Court, Pune that had rejected the suit of the appellant. The Court noted that neither Cutis Biotech nor SII presently had registration for the trademark. Since Cutis Biotech also did not have a registered trademark, it had based the case on the action of passing off.
The HC rejected the argument of the appellant that the use of their trademark would cause confusion among people. It also rejected the contention of the appellant that people purchased their product thinking they are protected against the COVID virus.
The HC bench observed that this argument was the opposite of the concept of 'passing off'. The Court concluded that the term 'COVIDSHIELD' was coined by SII and it had taken substantial steps towards its development and manufacture.
The Court made an observation in its order that "Serum Institute has, to date, made a sale amounting to Rs 37,507 lakh through the sale of Covishield vaccine. With these facts, the balance of convenience is not in favour of Cutis Biotech. Grant of injunction against Serum Institute would have a serious impact on its business."
The bench concluded that the respondent is the prior user of the mark and has acquired goodwill, consumers consciously not purchasing the goods of Cutis Biotech because of those reasons cannot be considered as a case of passing off by SII.
The Court said that there is adequate evidence to show prior adoption and use, but Serum Institute has also continued its use (of the trademark) without a break, and, till date, the company had produced 60 million Covishield vaccine doses per month, of which 48 million were supplied to the Union government. Serum Institute had coined the word 'Covishield' and took substantial steps towards its development and manufacture.
The HC while dismissing the appeal held, "Since there is no prima facie case in favour of Cutis Biotech, its prayer to direct the Serum Institute to maintain accounts cannot be granted. A direction to maintain accounts is not a routine order and cannot be issued when there is no prima facie case made out by Cutis Biotech."