Case: Cutis Biotech v. Serum Institute of India
Excerpt
The Bombay High Court on Tuesday refused to restrain The Serum Institute of India (SII) from using the mark ‘COVISHIELD’ for its vaccine against the COVID-19 virus. The reasons stated were that SII was the prior user of the mark. It had acquired enough goodwill and that discontinuing the name would create confusion and disrupt the vaccination program.
Facts
After the Commercial Court rejected the interim application because Cutis could not prove the triple test for passing off a trademark- 1. goodwill of the plaintiff, misrepresentation by the defendant, and damages to the plaintiff, Cutis Biotech appealed to the High Court under section 13 of the Commercial Courts Act, 2015. The matter was handled by a bench of Justices Nitin Jamdar and C.V. Bhadang.
The matter arose back in 2020, when Cutis Biotech had applied for registration of the trademark “COVISHIELD” on 29th April 2020, followed by SII on 6th June 2020. However, neither of their applications had been accepted yet.
Arguments before the Court
Cutis contested that SII was guilty of passing off. It argued that the company that was in business since 2013 had coined the term “COVISHIELD” on 25th April 2020 for use in their pharmaceutical products. They thus said that there was likely confusion between the two products.
SII presented that they had coined the term “COVISHIELD” in March 2020 itself. They produced an inter-office communication of 26 March 2020 to their purchase department which had the trademark ‘Covishield.’ In fact, in December 2020, 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.
Observations by the Court
The court observed that there couldn’t be any confusion between the two products since the buyer of the product “COVISHIELD” vaccine was the Government of India itself.
The sale of disinfectant or hand sanitiser, though it may relate to the same field, that is, health care products, cannot be said to confuse the mind of average consumers. It would be too farfetched to hold that there would be confusion in the average consumers’ minds between the use of a trademark in a Government administered vaccine at designated places and over-the-counter sanitiser products.”
That ‘Covishield’ is a vaccine to counter Coronavirus is now widely known. A temporary injunction directing Serum Institute to discontinue the use of mark ‘Covishield’ for its vaccine will cause confusion and disruption in the Vaccine administration program of the State.
The Court had also rejected the argument presented by Cutis that said people were buying their products thinking that it was the vaccine against COVID-19. The court said this was the opposite of passing off.
The Bench observed that there was no evidence to support the argument presented by Cutis that it had more goodwill than that of SII.
Court’s Orders
Considering both sides, the Court had held that the balance tipped in favour of Serum Institute of India and grant of injunction against SII would have a serious impact on its business. Thus, the Court rejected the plea.
Click here to read the Judgement.
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