The word "COVID" garnered itself a dreadful reputation in 2020. As one can imagine, it still remains to be one of the most trending and searched words on Google and also on the database of trademark registries in almost all jurisdictions across the world.
With respect to India, a shorter form of the word, i.e. "COVI" has been the subject of an arduous battle for trademark registration. As per the International Classification of Goods and Services, also known as the Nice Classification, all pharmaceutical preparations fall under Class no. 5. As on date of writing this article, whilst conducting a public search for wordmarks starting with the word "COVI" under class 5, a total of 218 search results are generated in the records of the Indian Trademarks Registry. Unsurprisingly, majority of the applications for registration of the wordmarks/ devices similar or identical to the word "COVI" have been filed in 2020 itself, out of which over 100 applications are presently objected or opposed. The wordmark under consideration for this article and one that has been fiercely contested and much sought after is "COVI SHIELD".
While the world is engaged in a battle against, possibly, the worst pandemic in human history, it is undeniable that the wordmark "COVI SHIELD" has tremendous potential of exploitation for a plethora of goods and services which aim to cure, abate, prevent or alleviate COVID-19 or symptoms related thereto. As a result two Indian trademark applications are contentiously entangled in litigation to win rights to use and own the "COVI SHIELD" wordmark. Particulars of the two applications and applicants are noted below:
- "COVISHIELD": Application No: 4493681, for "veterinary, ayurvedic, allopathic, medicinal and pharmaceuticals preparations, vitamins and dietary food supplements for humans and animals" under Class 5. The application was filed on April 29, 2020, by Mrs. Archana Ashish Kabra sole proprietor of Cutis Biotech; and
- "COVI SHIELD": Application No: 4522244, for "Vaccine for human use" under Class 5. The application was filed on June 6, 2020 by the Serum Institute of India Private Limited ("SII").
With a view to secure its rights in the "COVISHIELD" mark, the aforesaid Nanded based pharmaceutical company, Cutis Biotech, filed civil suit no. 1/ 2020 against SII, before the District Court at Nanded. Thereafter, in January 2021, on learning that SII is launching a vaccine under the brand name "COVI SHIELD", Cutis Biotech immediately approached the Commercial Courts at Pune and filed a suit for passing off and sought a temporary injunction against SII under Order 34, Rule 1 and 2 of the Code of Civil Procedure, 1908, whilst also claiming to be the lawful and prior user of the mark under contention.
Cutis Biotech is a manufacturer of medical equipment including hand sanitizers, fruit and vegetable washing liquids, disinfectants and skin care products. SII is a vaccine manufacturing company based in Pune and is presently producing a coronavirus vaccine, co-developed by the University of Oxford and British-Swedish company AstraZeneca. SII claims to be the world's largest vaccine maker, manufacturing close to 1.5 billion doses of vaccines every year.
In the aforesaid suit before the Commercial Court, Cutis Biotech argued that the use of the wordmark "COVI SHIELD" by SII is causing great loss to it. It further contended that as both entities are engaged in the same line of business, the use of a similar mark would cause great confusion in the minds of the general public and traders. Cutis Biotech also claimed to be prior user of the mark as its application for registration of the subject wordmark was filed a few months prior to the application of SII. On the other hand, SII opined that Cutis Biotech has been using the subject wordmark to primarily sell disinfection products for humans and animals, whilst SII is using the same only with regards to vaccines for humans and accordingly the products of the two entities are totally unrelated. SII further alleged that the Nanded based entity entered the market only in May 2020 and has hence not earned sufficient goodwill that would entice or enable SII to take undue advantage off Cutis Biotech's reputation, and hence the essential ingredient of the action of passing-off cannot be established.
SII submitted that it does not intend to manufacture or sell the products which Cutis Biotech is selling in the market. SII further vehemently contended that the balance of convenience also lies in its favour as the product innovated and manufactured by it under the "COVI SHIELD" mark is a vaccine to prevent the deadly Covid19 disease and that it is presently supplying the vaccine to the Government of India and also exporting it to many other countries. Furthermore, akin to hammering the last nail in the coffin, SII submitted that Cutis Biotech has filed another trademark application for a similar name under the same class, for manufacturing and selling vaccines, a fact, not disclosed by Cutis Biotech to the Court and hence has approached the Court with unclean hands.
The Court after due deliberations and consideration was of the opinion that the claim of the Cutis Biotech cannot be sustained for the below-mentioned reasons and passed an order on January 30, 2021:
- It was not sufficiently proved by Cutis Biotech that it had gained sufficient goodwill. While on the other hand, SII's vaccine was already being sold in many countries and that any injunction restricting the sale of the vaccine under the said name would cause great detriment to people all across the globe.
- Even if Cutis Biotech succeeded in getting the trade mark for disinfectant sprays, sanitizers etc., then also it would not mean that, it would get monopoly for all goods under Class 5. The product of SII is a vaccine to prevent Covid-19, that too for human use. The visual appearance is different. The purpose of the product is different. The product of SII is being sold to the Government of India and to governments of other countries. In such a scenario, the trade mark, "COVI SHIELD" for the product of SII cannot be said to cause any confusion in the mind of the general public.
- Whilst deliberating on the fact that Cutis Biotech had concealed that it had filed another trademark application after the application of SII, for the same category of goods, i.e. vaccines for human use, the Hon'ble Judge made the following comment:
Although, SII has successfully thwarted off Cutis Biotech's attempt for an injunction, other similar issues may arise for SII at a global level, as the same wordmark, "COVISHIELD" has been granted registration since August 11, 2020 in favour of TCB-Arrow Limited, a company based in England, for use in relation to medical equipment. Further, an American pharmaceutical company, Sorrento Theuraptics has also applied for registration of the subject trademark for selling medicines vis-à-vis COVID-19, which is pending before the United States Patent and Trademark Office (USPTO).
While the attorneys of Cutis Biotech have publicly commented that they will be filing an appeal against the order of the Commercial Court at Pune, It will also be interesting to see how SII and the global trademarks fraternity will address the various contentions surrounding the subject mark and derivatives thereof.
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