On 4th April 2021, a Nanded-based pharmaceutical and medicinal products company, Cutis Biotech (Plaintiff) filed for an interim injunction against SII, seeking to restrain them from using the trademark “COVISHIELD” or any other identical name for their Covid-19 vaccine.
Cutis Biotech had applied for registration of trademark “COVISHIELD” on 29 April 2020 for vitamin and dietary food supplements for humans and animals.
SII applied for registration of trademark “COVISHIELD” for a vaccine against Coronavirus on June 6, 2020.
However, on July 24, 2020, SII sought the Drugs Controller General nod to conduct clinical trials in India for the COVISHIELD vaccine.
On August 2, 2002, the Directorate General of Health Services granted SII permission to manufacture test batches of the vaccine for clinical trials.
On December 10, 2020, the Centre, in its Covid-19 vaccine procedure, referred to SII’s COVISHIELD in collaboration with AstraZeneca for Phase II/III stage.
Cutis Biotech, on 11 December 2020 filed a case against SII and on December 12, 2020, applied for trademark registration for vaccine.
In January 2021, Cutis moved to a Pune district court that refused its plea to restrain SII from using the trademark. After which, Cutis moved to Bombay High Court.
Please note, neither Cutis nor SII have a registration for the trademark, thus Cutis had based the case on the action of passing-off citing “goodwill” and prior adoption of the mark.
Prima facie the argument implied that the confusion in products will lead to people buying Cutis Biotech’s product which will be because of the goodwill generated by SII.
After evaluating the evidence on record, the Bench inferred that SII had coined the word ‘COVISHIELD’ and had taken “substantial steps towards its development and manufacture”, that there is adequate and convincing material to demonstrate the prior adoption of the trademark by SII and hence Cutis cannot claim to be a prior user of ‘COVISHIELD’.
Further, the Serum Institute has also continued its use without a break.
It is placed on record that Serum Institute has produced 60 million doses of the ‘COVISHIELD’ vaccine per month and has supplied 48 million doses to the Government of India. Serum Institute has obtained various permissions and licenses required to manufacture the vaccine under the trademark ‘COVISHIELD’, the Court said.
The Bombay HC concluded that since the Serum Institute is the prior user of the mark and has acquired goodwill, consumers consciously not purchasing the goods of Cutis Biotech because of those reasons cannot be considered as a case of passing off by SII.
Bombay HC noted that “COVISHIELD, a vaccine to counter Coronavirus is now widely known and “a temporary injunction directing SII to discontinue the use of Trademark will cause a disruption and confusion in the vaccination programme”.
The Court also held that the balance of convenience is not in favour of Cutis Biotech and a grant of injunction against SII would have a serious impact on its business.