India - Trademark - Delhi High Court Bars Use Of 'Vigoura' To Protect Pfizer's Brand 'Viagra' (2024)

More

The Delhi High Court, through its judgment in the case ofPfizer Products Inc. v. Renovision Exports Pvt. Ltd. and AnrCS(COMM) 378/2018, dated May 1, 2024, has decreed the suit infavour of the US-based drug major Pfizer Products Inc. (plaintiff)by permanently restraining the Indian entity Renovision ExportsPvt. Ltd. (defendants) or anyone acting on their behalf frommanufacturing, selling, or offering for sale, marketing,advertising or in any other manner using the mark 'Vigoura'or any other deceptively similar mark to the plaintiff's trademark 'Viagra' in relation to any of their goods as it wouldamount to infringement or passing off the registered mark ofViagra.

Brief Facts

Pfizer Inc., USA granted the plaintiff the trademark rights to"Viagra" through a Deed of Assignment on June 3, 1999,with the associated goodwill. The plaintiff had also providedevidence which corroborates that "Viagra" is a uniquelycoined term. The word had no pre-defined meaning, and it wassubsequently included as a proper noun in the English dictionarydue to its popularity and widespread recognition as a Pfizerproduct. It was also intrinsically unique and devoid of anydescriptiveness, which complies with Section 9 of the TrademarkAct. This further has been substantiated by 147 countries in whichthe mark has been registered.

The Defendants, however, had submitted that both the marksdiffer in terms of variations and products for which they areapplied rather than challenging the mark's novelty ordistinctiveness. The Court noted that the plaintiff acquiredstatutory rights in India on June 26, 2006. The culmination ofcomprehensive oral and documentary evidence of registrations invarious countries and regulatory approvals proving Pfizer'sexclusive ownership as a registered proprietor of the trademarkwithin India from the date of application remained uncontested bythe Defendants. As a result, this issue was decided in the favourof the Plaintiffs.

The plaintiff's claim originated globally in 1995 and inIndia since 1996, with the first commercial use in 2005. TheDefendants were granted a license in 1999 by the Chief LicensingAuthority, State Drugs Controller, Patna. By this time, theplaintiff had already applied for registration in India. Thedefendant's claim of honest and concurrent use was thusundermined due to the plaintiff's earlier use Globally and inIndia. It was observed that an applicant is required to be vigilantwhile filing their marks. Had the defendant been vigilant andundertaken the search prior to the adoption of the trademark"Vigoura", they would have discovered Pfizer'spending trademark application for "Viagra".

The plaintiff also claimed that the trade mark adopted by thedefendants was deceptively, phonetically, structurally similar andconfusing. It was a direct infringement of the plaintiff'strade mark and posed a threat to its market reputation andgoodwill. The Defendants had disputed the contentions put forth bythe plaintiff by highlighting the therapeutic differences betweenthe two medications. While Viagra is an allopathic medicine, in atablet form and provides instant relief intended only for maleerectile dysfunction, Vigoura is a homeopathic medicine, in liquidform and a complete therapy originating from 100-year-old provenhomeopathic practices for curing several other sexual problems.

They also contended that the word coined is not similar sinceVigoura has been coined from the English word 'Vigour'. TheCourt noted that the customers often remember the more dominant andprominent parts of the trade mark rather than the whole intricatetrade mark. Due to this, they often associate the goods withsimilar trademarks. In this case, the parties being pharmaceuticalcompanies, trade mark infringement not only affects its goodwilland reputation, results in economic losses but also jeopardises thehealth of the public. The plaintiff had also satisfactorilydischarged its burden of proof by producing ample documents asevidence that showed its trans-border reputation use and that aclear case of passing off was established.

On the question by the defendant that several entities, apartfrom the Plaintiffs, utilise the identical brand name"Viagra" in relation to Class 05 pharmaceuticals, theCourt relied on the precedent set in the case of EsselPackaging Ltd. v. Sridhar Narra & Anr 2002 SCC OnLine Del631, where it was held that the unauthorised use of a trademark by others does not grant a carte blanche to thedefendant to infringe upon the trade mark in question. Thus, theinfringement and the need for injunctive relief are to bedetermined by the Defendants' actions alone, withoutconsideration of third-party use that has not been contested by theplaintiff.

The plaintiff had requested a decree of damages against thedefendants for jeopardising their reputation and goodwill, whichresulted in economic losses. They valued their damages claim up toRs. 20 lakhs. However, without any evidence as to the computationof damages, the Court granted them a nominal damage of Rs. 3 lakhs,believing it to be a reasonable amount, along with the litigationcosts. Further, it restrained the Defendants from using or anyoneacting on their behalf, from manufacturing, selling, or offeringfor sale, marketing, advertising or in any other manner using themark 'Vigoura' or any other deceptively similar mark to theplaintiff's trade mark 'Viagra' in relation to any oftheir goods as it would amount to infringement or passing off ofthe registered mark of Viagra.

Conclusion

The Court had analysed the similarity between 'Viagra'and 'Vigoura' marks and concluded that the marks not onlyexhibited high degrees of phonetic and visual similarities but alsoposed a risk to public health since both of these medicines wereaimed to be used for similar medical treatments which could misleadthe consumers into believing that the defendant's mark(s) wereeither a variant of or associated with the plaintiff. Unlikenon-medicinal trademarks, stricter measures are required to preventconfusion arising from the similarity of marks among medicines, asdecided in Cadila Healthcare Ltd v. Cadila Pharmaceuticals 2001 (2)PTC 541 SC.

Furthermore, even when the mark 'Vigoura' was granted alicense in India in 1999, the plaintiff had already launched itsproducts under 'Viagra' in the US in 1995. Their intent touse the mark in India was expressed through their filing of thetrademark application and their cross-border reputation, even ifthe products were not directly sold in India.

The ruling serves as a bulwark to protect consumers againstunauthorised goods, fraud, and questionable marks that takeadvantage of the goodwill, labour, and reputation of the originalentity.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circ*mstances.