Bombay High Court Rejects Plea To Restrain Serum Institute Of India From Using 'COVISHIELD' Trademark

A division bench of Justices Nitin Jamdar and C. V. Bhadang said that the Nanded civil court's order, refusing Cutis an injunction against Serum Institute was not "arbitrary or perverse" warranting the HC's intervention.

The bench added that restraining SII from temporarily using the trademark would have large-scale ramifications traversing beyond the parties to the suit.

"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 programme of the State."

While both manufacturers have not managed to register the Covidshield trademark, the Bench held that there was prima facie evidence to show that SII had adopted the name prior to Cutis Biotech and that SII has continued using the name without a break.

After evaluating the evidence on record, we find that Serum Institute had coined the word 'Covishield' and took substantial steps towards its development and manufacture. Thus, there is adequate and convincing material on record to demonstrate the prior adoption of the mark by Serum Institute. There is no perversity in the finding that Cutis Biotech cannot claim to be a prior user of 'Covishield'

The Dispute

Cutis Biotech and Serum Institute of India Pvt. Ltd. applied for registration of the Covidshield trademark on April 29, 2020, and June 6, 2020, respectively and their applications are pending.

Cutis Biotech filed a suit against SII in the Commercial Court at Pune and sought an interim injunction to restrain SII from using the trademark 'Covishield' and maintain the accounts regarding the sale in December.

The Pune Bench refused relief, on the grounds Cutis could not prima facie prove the triple tests of the passing off a trademark i.e. goodwill of the plaintiff, misrepresentation by the defendant, and damages to the plaintiff.

Therefore Cutis Biotech approached the HC in appeal under section 13 of the Commercial Courts Act, 2015.

Cutis, argued that under Sub Section (1) of the Trade Marks Act, 1999, no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark, however, as per sub-section (2) action can be taken against any person for passing off his goods or services as the goods and services of the applicant and preserves the remedies to prevent passing off actions.

Arguments

Through advocate Aditya Soni, instructed by White & Brief Advocates & Solicitors, Cutis Biotech argued that SII was guilty of passing off.

They argued that Cutis Biotech is selling pharmaceutical products, and it commenced its business in the year 2013. On 25 April 2020, they coined the word 'Covishield' and decided to use it in respect of pharmaceutical and other related products. They submitted that the company applied for registration of this trademark on 29 April 2020 regarding veterinary, ayurvedic, allopathic, medicinal, and pharmaceutical preparation and vitamins and dietary food supplements for humans and animals. And that it has sold products in various states in India. The trademark 'Covishield' has become a distinct product and business of Cutis Biotech.

The Bench noted that to grant an injunction in cases of passing off, both ingredients of injunction, i.e prima facie case, and balance of convenience should exist in favor of the applicant.

SII represented by Senior Advocate Birendra Saraf and Hitesh Jain instructed by Parinam Law Associates submitted that they coined the mark 'Covishield' in March 2020, itself. They produced an inter-office communication of 26 March 2020 to their purchase department which had the trademark 'Covishield.'

They cited a statement issued by the company in March 2020 that they are investing around USD 100 million on the COVID-19 vaccine and yet another statement in April 2020 that Serum Institute plans to produce a Coronavirus vaccine in collaboration with Astra Zeneca.

The trial of the Oxford Coronavirus vaccine commenced around 23 April 2020 and on 3 May 2020, Serum Institute received virus seed, and cell bank from Oxford University, and permission was granted by DCGI, they argued. SII submitted that to date, it has made a sale amounting to Rs.37507 lakhs through the sale of the 'Covishield' vaccine.

Observations

The Bench noted that Cutis Biotech's response to the internal documents of Serum Institute, claiming they are fabricated, "is not possible to accept..as further narration would show that none of the documents are in isolation."

It held that from the evidence produced on record, Cutis Biotech failed to substantiate its assertion that it was a prior user of the mark and had acquired goodwill is more than clear. There is no perversity in the finding of the District Court that Cutis Biotech has not established this test for granting an injunction.

No Likelihood of deception

The Bench held that there is no likelihood of confusion between the products of Cutis Biotech and Serum Institute as the vaccine 'Covishield' produced by Serum Institute is not available across the counter but through the Government in the form of an injection.

The sale of disinfectant or hand sanitizer, though it may relate to the same field, that is, health care products, cannot be said to cause confusion in the mind of average consumers…. It will be too farfetched to hold that there will 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 sanitizer products.