The Bombay High Court on Tuesday refused to restrain Serum Institute of India (SII) from using the mark ‘COVISHIELD’ for its vaccine against the COVID-19 virus on the ground that SII was the prior user of the mark, had acquired enough goodwill and that discontinuing the name would create confusion and disruption in the vaccination programme (Cutis Biotech v. Serum Institute of India).
The Court was hearing an appeal filed by Cutis Biotech selling pharmaceutical products, seeking temporary injunction against SII to prevent it from using the trademark ‘COVISHIELD’.
The appeal arose from an order of the commercial court in Pune wherein Cutis filed a suit and the interim application in the suit was rejected.
A Bench of Justices Nitin Jamdar and CV Bhadang dismissed the appeal holding that Covishield is now widely known as a vaccine to counter Coronavirus.
“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. In this case, thus, the grant of an injunction would have large scale ramifications traversing beyond the parties to the suit,” the order said.
Cutis Biotech had applied for registration of trademark ‘COVISHIELD’ (‘Covishield’) on 29 April 2020 and thereafter on December 12, 2020 for vaccines.
SII applied for registration of trademark ‘COVISHIELD’ for vaccine on June 6, 2020.
The Court however 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.
Cutis’ contention was that there was a likelihood of confusion between their products and SII. Another argument was that the suppliers of Cutis had allegedly stopped supplying goods to them which was causing damage to them and impairing their growth.
From May 30, 2020, Cutis Biotech received products like antiseptic and disinfectant liquid, sanitizes, bearing brand ‘Covishield’, from its manufacturers.
“From May 30, 2020 to December 31, 2020 for seven months, the turnover of Cutis Biotech was Rs.16, 00,152 and it spent Rs.1, 22,500 towards advertising the products,” they informed the Court.
SII opposed the plea contending that it had coined the mark ‘Covishield’ in March 2020 itself.
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.
The Court rejected Cutis’ argument that there was confusion between the two products. The reason being that ‘Covishield’ vaccine was not being sold across the counter but was administered through government agencies. “The buyer of the product ‘Covishield’ of Serum Institute is the Government of India,” the Court said.
The Court also rejected another argument of Cutis claiming that people purchased their product thinking they are protected against COVID virus. The Bench noted this argument was the opposite of the concept of ‘passing off’.
Prima facie the argument implied that the confusion in products will lead to people buying Cutis Biotech’s product which will be because of the goodwill generated by SII.
After evaluating the evidence on record, the Bench deduced that SII had coined the word ‘COVISHIELD’ and had taken “substantial steps towards its development and manufacture”; that there is adequate and convincing material to demonstrate the prior adoption of the trademark by SII and hence Cutis cannot claim to be a prior user of ‘COVISHIELD’.
Further, the Serum Institute has also continued its use without a break.
It is placed on record that Serum Institute has produced 60 million doses of the ‘Covishield’ vaccine per month and has supplied 48 million doses to the Government of India. Serum Institute has obtained various permissions and licenses required to manufacture the vaccine under the trademark ‘Covishield’, the Court said.
The Court concluded that since the Serum Institute 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 noted that SII had till now made a sale amounting to Rs. 37,507 lakh through the sale of their vaccine and has spent Rs. 28 crore on the development, research and is expected to spend a further Rs. 20 crore.
In this backdrop, the Court held that the balance of convenience is not in favour of Cutis Biotech and grant of injunction against SII would have a serious impact on its business.
Senior Advocate Birendra Saraf along with Advocates Rohan Savant, Hitesh Jain, Pooja Tidke, Monisha Mane Bhangale and Warisha Parkar from Parinam Law Associates appeared for Serum Institute.
Advocates Abhinav Chandrachud along with Advocates Aditya Soni, Chetan Alai, Shriniwas Bade and Mr. Swaraj Jadhav from White & Brief Advocates & Solicitors appeared for Cutis Biotech.