Serum Institute defends its rights over COVISHIELD

COVISHIELD, the Astra Zeneca developed vaccine, and manufactured by Serum Institute in India to prevent Covid19, is the subject of a trademark dispute between two entities operating in the pharmaceutical trade.

Cutis Biotech (Cutis), the Plaintiff, filed the suit before the Commercial Court, Pune, alleging passing off to restrain the Defendant, Serum Institute India Private Limited (Serum Institute), from using the mark COVISHIELD. No party had obtained registration of the mark COVISHIELD, and their applications are pending. The District Court refused a temporary injunction to Cutis, holding it has not acquired goodwill in a short time. Aggrieved by the District court’s order denying the preliminary injunction, Cutis filed an appeal before the Division Bench (two-Judge Bench) of the Bombay High Court, which is under consideration.

Cutis, in support of its case, stated:

  1. Cutis is a proprietorship concern that commenced the business of selling pharmaceutical products in the year 2013.
  2. On April 29, 2020, they filed an Application for registration of the mark ‘COVISHIELD’ in Class 5 in relation to veterinary, ayurvedic, allopathic, medicinal, and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals.
  3. On December 12, 2020, Cutis filed another application for registering the mark ‘COVISHIELD” in Class-5 for a vaccine for human use and others.
  4. Cutis relies on prior use, goodwill and reputation to restrain Serum Institute from using the mark COVISHIELD.

Serum Institute filed a reply contending:

  1. They started business in the year 1966 as a registered partnership firm. They manufacture and supply vaccines & immuno-biologicals to various international organizations. 
  2. On June 6, 2020, they applied for registration of the mark ‘COVISHIELD’ for vaccine under Class-5. 
  3. On July 24, 2020, they applied to Drugs Controller General to conduct the clinical trials in India for a vaccine to be called ‘COVISHIELD.’ 
  4. On July 31, 2020, they applied to Drugs Controller General India to manufacture the ‘COVISHIELD’ vaccine for clinical trial purposes. 
  5. On August 2, 2020, the Directorate General of Health Services, Biological Division granted permission to Serum Institute to manufacture test batches of Coronavirus vaccine for clinical trials. 
  6. On August 20, 2020, Food and Drugs Authority granted provisional permission to manufacture additional products for the Coronavirus vaccine subject to conditions.
  7. The Ministry of Health and Family Welfare, Government of India, on December 10, 2020, published the COVID-19 vaccine procedure, referring to the trademark ‘COVISHIELD’ of Serum Institute in collaboration with AstraZeneca.

The District Court, after considering the pleadings and arguments, refused to grant an injunction holding that (1) Cutis and Serum Institute do not have registration for the mark ‘COVISHIELD’ (2) Cutis has not acquired goodwill in a short time (3) there is no passing off by Serum Institute (4) rival products are meant for different purposes and trade channels differ.

In the appeal before the High Court, Cutis reiterated its stand of being prior user and having acquired goodwill and reputation in the mark COVISHIELD and confusion in the market.

Serum Institute argued that the order passed by the District court is a well-considered one and requires no interference

The Division Bench, made the following observations:

  • Admittedly, Cutis coined the word COVISHIELD on April 25, 2020, and applied for trademark registration on April 29, 2020. On May 30, they received products like antiseptic and disinfectant liquid, sanitizers, etc, bearing brand ‘COVISHIELD’ from its manufacturers. Cutis claims to have sold COVISHIELD branded products in several states in India over seven months and spent a considerable amount on advertisements. However, pleadings nor documents substantiate prior adoption and use of the COVISHIELD mark. Thus, Cutis has failed to make out a prima facie case.
  • On the other hand, Serum Institute has filed several documents of March 2020, mentioning investment of USD 100 million and plan to produce Corona vaccine in collaboration with Astra Zeneca, which evidences prior adoption of the COVISHIELD mark. Thus, by June 6, 2020, when Serum Institute applied for registration of the mark COVISHIELD, it was already well-known in the media. Serum Institute has filed documents evidencing a continuous chain of seamless activity to develop the vaccine using the mark COVISHIELD. Cutis has simply denied these documents as fabricated. Thus, there is convincing material on record to substantiate prior adoption of the mark by Serum Institute.
  • Cutis has also failed to prove their goodwill and reputation considering the turnover of the products during the period is not significant.
  • The contention that the products of Cutis and Serum Institute will cause confusion in the market is not sustainable. Primarily, ‘COVISHIELD’ produced by Serum Institute is not available across the counter and is administered through Government agencies. The buyer of the ‘COVISHIELD’ vaccine is the Government of India, and administration of the vaccine is through injection. It is farfetched to hold that there will be confusion in the consumers’ minds between using a trademark in a Government administered vaccine and over-the-counter sanitiser products of Cutis.
  • Cutis’s contention that people may buy its COVISHIELD products thinking they are protected against corona virus is a self-destructive argument against the concept of passing off. Moreover, if such purchases take place, it will be because of the goodwill generated by Serum Institute in the COVISHIELD mark. To succeed in a claim of passing off, Cutis has to show that Serum Institute is passing off its goods as that of Cutis based on its goodwill which Cutis has failed to substantiate in the instant case.
  • From the documents on record, it is evident that further to the Government publishing the COVID-19 procedure on December 10, 2020, referring to the ‘COVISHIELD’ vaccine of Serum Institute, Cutis filed a new trademark application for the mark COVISHIELD in Class 5 for vaccines. The subsequent filing of a new application by Cutis is an afterthought knowing that they do not have an application for COVISHIELD in relation to vaccines while filing a suit for passing off.
  • It also needs to be considered that sixty-six million doses of ‘COVISHIELD’ have been supplied to the Government of India, and around fifty-nine million doses have been provided to over seventy-two different countries.
  • Overall, Cutis does not have a prima facie case, and the balance of convenience is also not in their favor.

In light of the above, the High Court refused to interfere with the order passed by the District Court and dismissed the appeal.

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