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  5. Is “Covishield” Protected?

Background

In the midst of global pandemic of coronavirus, development, distribution and vaccination campaigns to administer vaccine to the citizens of the country was at its peak. The Central Drugs and Standards Committee (CDSCO) formally approved vaccine “Covishield” from Serum Institute of India (SII) that is based on the Oxford AstraZeneca vaccine. Subsequently, Covishield was administered to high risk patients first, followed by other citizens in large numbers while the name “Covishield” was under pipeline for trademark registration. Before the SII applied for trademark registration of the word “Covishield” under class 5 for vaccine for human use, another company ‘Citus Biotech’ had applied for registration of the mark “Covishield” under class 5 for veterinary, ayurvedic, allopathic, medicinal and pharmaceutical preparations, vitamins with dietary food supplements for humans and animals. While both the registrations were under the pipeline, Citus Biotech came to know about SII’s trademark application and filed a suit in the District Court, Pune against the SII to restrain and prohibit SII or any other persons claiming through them from using the trademark “COVISHIELD” which is identical or similar to the Citus Biotech’s trademark. After filing this suit, Citus Biotech also applied for registration of the same trademark for vaccine for human use.

Passing off Action & District Court Proceedings

Interestingly, the trademark application for both the parties were still pending and therefore the court had to follow the principles of a passing off action. The passing off action is based on the principle that a person cannot gain immunity from presenting his goods or services as of another person and seek benefit therefrom. The holders of unregistered trademarks have the provision to initiate proceedings against passing off of their marks. The District court of Pune drew strength from the ratio decided in the case of Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., and Vishnudas v. Vazir Sultan Tobacco Co. Ltd., and ruled that Citus Biotech cannot have monopoly over the trademark “COVISHIELD” for the entire class of goods thereby refusing prohibition to use the mark against SII. Further, it was observed that the visual appearance when compared as a whole, the products are totally different. No prima facie intention can be seen on part of the SII to create confusion or misrepresentation and furthermore, there seems to be no likelihood to cause injury or divert business of Citus Biotech, or harming the reputation and goodwill thereof. Lastly, it was held that the subsequent application filed by citus biotech for registration of the trademark “COVISHIELD” for vaccine for human use is of relevance. Thus, Citus biotech did not approach the Court with clean hands. Aggrieved by the District court’s decision, citus biotech filed an appeal in the Bombay High Court.

Observations of the Hon’ble High Court

The Hon’ble Bombay High Court took various relevant factors into consideration to establish a passing off action. The Court considered pleadings of both the parties in relation to goodwill earned and prior usage. Citus Biotech’s case was that they received various healthcare products with the said trademark such as antiseptics, sanitizers, spray and so on and have started selling those across the country subsequently has earned goodwill and reputation. However, the case made by the serum institute was far more convincing with help of all the records and evidence presented. The Serum Institute has continued to use the trademark without a break; it has also obtained various permissions and licenses to manufacture the vaccine under the trademark “COVISHIELD”; they have executed agreements globally for the supply of vaccines. The court noted that the SII coined the word “COVISHIELD” and has made significant developments with regards to vaccines with the mark “COVISHIELD”.

Further, the court reaffirmed the observation of the District court judge that products of both the parties are different and reasoned the affirmation with vaccines being administered by the Government through injections and are not sold over the counter therefore, there cannot be any likelihood of confusion between healthcare products and a vaccine. Lastly, the court expressed concerns regarding disruption of administration of the vaccine program in the country following a prohibition on the trademark “COVISHIELD”. Therefore, the court upheld the decision of the District Court, Pune and refused to restrain Serum Institute of India Pvt Ltd from using the trademark “COVISHIELD” for their products.

Conclusion

The case discussed above is an illustration to the fact that Indian courts have begun to take a liberal approach towards protection of unregistered trademarks by considering the matter at hand with relevant factors at length. The observations made by the Hon’ble District Court, at Pune are remarkable, made with careful consideration of the facts, arguments, evidence, and established precedents on the issue at hand. Moreover, the decision epitomizes a meritorious understanding of a passing off action and related factors. The decision largely protected unregistered trademark “Covishield” for vaccines for Covid-19 even though trademark application for its registration was filed after Citus Biotech. Considering the necessity of vaccine in the current situation and disrupting with its name right in the middle of its administration would have caused great deal of chaos and confusion all over the country. Such court decisions truly ensure smooth functioning of the administration. 

At Photon Legal, we have been advising and helping our clients for registering their trademarks in record time for years. So get your trademarks registered today to protect and grow your business! If you have any queries or require assistance, please reach us at photon.ip@photonlegal.com.

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