This note discusses the judgement passed by the Delhi High Court in a suit filed by the Plaintiff, Pfizer Products Inc (Pfizer). Pfizer filed the suit to safeguard its trademark rights in “VIAGRA,” a well-known erectile dysfunction drug and to permanently restrain the Defendants, Renovision Exports Pvt. Ltd., and Others (Renovision) from marketing a homeopathic medicine “VIGOURA,” which is purportedly used for treating sexual disorders. Pfizer in the suit initially relied on the common law rights of passing off, however, later amended the pleadings to incorporate trademark infringement as well.

Pfizer in the suit contended:

1. They are a a leading global pharmaceutical company involved in the research, manufacture, and sale of drugs for animal, consumer, and pharmaceutical use in over 150 countries.
2. In 1995, they adopted the trademark ‘VIAGRA’ for Sildenafil Citrate, a drug developed to treat erectile dysfunction.
3. VIAGRA was introduced in the US market in the year 1998 and quickly gained wide media attention and achieved commercial success due to extensive publicity and Pfizer’s educational efforts.
4. The trademark VIAGRA is registered in over 147 countries, including India, where it has been registered since 1996 for treating erectile dysfunction and was renewed in the year 2006. On account of widespread recognition, the term VIAGRA has been included in the Oxford English Dictionary.
5. Due to extensive publicity through various media, medical literature and online sources like Pfizer’s website, accessible to Indian users the trademark VIAGRA is well-known.
6. In February 2005 they became aware of Renovision selling products under the name “VIGOURA,” and variants such as “VIGOURA 2000,” “VIGOURA 5000,” and “VIGOURA 1000” etc. Renovision responded to Pfizer’s cease and desist letter refuting the contentions and asserting their rights in the VIGOURA trademark.
7. Pfizer has opposed Renovision’s application for the marks VIGOURA 2000 and VIGOURA 5000. The opposition against VIGOURA 2000 was allowed by the Trademark Registry and the application for VIGOURA 5000 was abandoned for non-prosecution.
8. Adoption of the deceptively similar mark VIGOURA is to ride on the goodwill and reputation of the VIAGRA mark. Confusion is imminent as the rival products target the same customers seeking remedies for similar medical conditions.

Renovision defended the suit contending the following:

1. They are specialists in homeopathic medicines, having a reputation in the field and manufacturing several products including “VIGOURA 1000”, “VIGOURA 2000”, and “VIGOURA 5000”
2. VIGOURA 1000 focuses on vitality and regulating menstruation in women and differs from VIAGRA which addresses male erectile dysfunction.
3. VIGOURA 2000 and VIGOURA 5000 are homeopathic, non-steroid aphrodisiacs intended to stimulate metabolic processes showing gradual effects unlike VIAGRA, which provides instant relief.
4. Adoption is bonafide as VIGOURA has been derived from VIGOUR and has been used in good faith.
5. VIGOURA branded products have significant market history with VIGOURA 2000 being in the market since 1999.
6. They have applied for registration of the trademarks VIGOURA 2000 and VIGOURA 5000 in the year 2003. They have obtained copyright registration for the packaging of VIGOURA 2000 in 2005.
7. There are other entities who have secured registration for marks similar to VIAGRA in class 5 such as VIGORA, VIGOR PLUS and VIGOUR MALT.

After completion of pleadings, the Court framed issues. Pfizer examined a witness from their side and Renovision examined two to prove its case. However, at the stage of final arguments there was no representation for Renovision despite notice and the Court proceeded to adjudicate the matter.

Court’s ruling

• Pfizer has proved their legal claim to the mark VIAGRA through a Deed of Assignment which remains unchallenged. They have further established that VIAGRA is a uniquely coined term with no prior meaning, making it inherently distinctive. Pfizer has substantiated their exclusive rights through evidence of continuous and bona fide use of the VIAGRA trademark, supported by international registrations, regulatory approvals, and inclusion in the Oxford dictionary, along with successful registration in India.
• Renovision’s claim of prior use of the mark VIGOURA will not succeed. Pfizer’s global introduction of VIAGRA in 1995, Indian registration application in 1996 show their prior use. Documents on record evidence that Renovision started using the VIGOURA mark in May 1999 which is nearly three years after Pfizer had applied for the exclusive statutory rights to the VIAGRA trademark in India substantiating their priority.
• Renovision contends that VIAGRA and VIGOURA are phonetically and structurally distinct. VIAGRA is an allopathic medicine in tablet form for male erectile dysfunction, while VIGOURA is a homeopathic liquid medicine for various sexual problems. As the rival products have different therapeutic effects, forms there is no chance of confusion. Pfizer contends that even if consumers understand the difference between allopathic and homeopathic treatments, the resemblance in names and the similar context of use could lead to an association between the two products. The confusion will be intensified as the products will be sold through same or overlapping channels targeting the same consumer segment. Considering the above the Court held that VIGOURA is deceptively similar to VIAGRA and there is strong potential for confusion.
• With regard to passing off Pfizer has provided significant evidence of VIAGRA’s global media coverage, online presence, and recognition in medical and pharmaceutical conferences which supports their claim of transborder-reputation in India. Pfizer has successfully proved the elements of goodwill, misrepresentation, and damage.
• Renovision’s contention that there are other parties in the market using marks similar to VIAGRA and Pfizer has not acted against them will not succeed. Pfizer’s failure to take legal action against third parties with similar marks does not prevent them from seeking injunctive relief against Renovision in a trademark infringement case.

In light of the above findings, the Court decreed the suit in favour of Pfizer and permanently restrained Renovision from using the mark VIGOURA or any other mark deceptively similar to VIAGRA and also awarded damages of Rs. 300,000 (approx. US$ 3600)

Comment

This judgement emphasizes the protection afforded to established trademarks, the significance of demonstrating prior use and distinctiveness, and the need for preventing consumer confusion especially in the case of pharmaceutical products.