Court Issues Notice To Serum Institute Of India On Suit Against Use Of Name 'COVISHIELD' For Proposed Vaccine

A civil court in Maharashtra has issued notice to the Serum Institute of India(SII) in a passing off suit seeking to restrain the pharmaceutical company from using the trademark "COVISHIELD" or "COVID-SHIELD" or any other identical or similar name for its proposed vaccine for the Coronavirus induced pandemic.

The civil suit was filed by a Nanded-based pharmaceutical company "Cutis Biotech" which claimed to be the "lawful and prior user" of the tradename "COVI SHIELD". The plaintiff claims that it filed an application for registration of "COVI SHIELD" trademark in its name on April 29, 2020.

The plaint states that the SII made application for the tradenames "COVI SHIELD" and "COVID SHIELD" only in June. It further states that on July 11 the Registrar of Trademarks raised objection to the applications of SII pointing out that the plaintiff has made a prior application with respect to the trademark.

"The defendants even after having knowledge of the plaintiff's trademark have not taken any appropriate steps to stop using the trademark belonging to the plaintiff", says the plaint.

The plaint also arrays a Telengana based businessman, Mr. Bandaru Srinivas, as the second defendant on the allegation that he is also attempting to use the plaintiff's trademark.

On December 11, the Additional District Court at Nanded issued notice to the defendants on the suit. The next date of hearing is December 18.

Adar Poonawalla, the CEO of the Pune-based SII, had announced on December 7 that it has applied for emergency use authorisation for Covishield coronavirus vaccine.

"As promised, before the end of 2020, @SerumInstIndia has applied for emergency use authorisation for the first made-in-India vaccine, COVISHIELD. This will save countless lives, and I thank the Government of India and Sri@narendramodiji for their invaluable support," the CEO of Serum Institute of India said in a tweet.

Cutis Biotech says in its suit that it has placed orders before several manufacturers for other medicinal products under the name "COVI SHIELD" but the manufacturers are expressing reluctance to take orders from it under the name 'COVI SHIELD' due to news published about SII using the name.

"This has caused harm to the goodwill of the plaintiff due to the misrepresentation of its trademark by the first defendant (SII). Most importantly, it is causing confusion among public as well as the manufacturers. Therefore, it is necessary to issue perpetual injunction in favour of the plaintiff by restraining the defendant no.1 from passing off goods under the trademark "COVI SHIELD" or "COVID SHIELD", the plaintiff says.

It is stated that irrespective of the fact that the trademark registration application is pending, the plaintiff has right to seek remedy against the defendants for passing off.

"The plaintiff's trademark "COVI SHIELD" squarely qualifies the criteria of passing off as laid down in various landmark judgments of the Hon'ble Supreme Court", the plaint states.

The suit seeks the following prayer :

"Pass a decree for 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 trademark "COVID SHIELD" which is identical or similar to the plaintiff's trademark "COVI SHIELD".