The two pharmaceutical firms produced “COVID-19” vaccinations under the brand name “Covishield,” and both had attempted to register this trademark, which was still pending.
Cutis Biotech filed a Commercial complaint in the Court of Pune to preserve the aforementioned mark, seeking an interim injunction to prevent “Serum Institute” from utilising the aforementioned mark.
“Cutis Biotech” submitted “Application No.4493681” for protection of the trademark “Covishield” on April 29, 2020. This application is currently being processed by the Trademark Office. And “serum Institute” filed “Application No.4522244” for the registration of the trademark “Covishield” on June 6, 2020.
On 11 December 2020, “Cutis Biotech” filed a trademark registration in the District Court of Nanded, claiming the law of passing off, to prevent “Serum Institute” from using the mark “Covishield”.
“Cutis Biotech” requested an interim injunction in this case to prevent Serum Institute from utilising the mark “Covishield” and to keep the sales records.
The interim request was rejected by the learned District Judge.
Findings of the Court
The infringement and passing off, based on the concept of equity, bans unscrupulous people from profiting from a legitimate company’s reputation and goodwill, and the order imposed assures conformity with same. To prove a claim of passing off, the petitioner must establish the following three elements:
- Dignity and character associated to his/her goods and services
- Defendant’s actions would certainly lead the public to assume that the defendant’s goods and services are the individual’s products and services
- Damage caused or expected to be incurred as a result of the said passing off.
The District Court rejected the “interim application” on the following principles:
- In such a short amount of time, the Petitioner had garnered no respect.
- There’s no fraudulent misrepresentation by the Defendant to pass off or redirect the Claimant’s business. The Applicant’s and Respondent’s goods were not the same.
- The trading routes differed. There’s no proof that every misunderstanding had been created in the minds of the customers.
- The Applicant’s and Respondent’s items were employed for distinct purposes, and their external appearances differed.
“Cutis Biotech”, outraged by the judgement, filed an appeal with the Bombay High Court. The Bench went through the multiple examination for passing-off in detail, reviewing the filings from the two firms.
First, after reviewing the facts on record and considering the previous usage element, the Court also couldn’t agree with the Claimant’s assertions of becoming the previous use of the mark.
The Bench was persuaded by the Defendant’s representations, which included cross discussions on the mark, as well as the momentum they gained via announcements of partnerships and connections.
Second, while deciding on the involved sides’ goodwill, the Judge could not discover enough information to show goodwill in favour of the Claimant’s use of brand.
The court discussed on the possibility of deceit and misunderstanding between both the involved sides’ products, that is determined based on the minds of normal intellect and poor remembrance consumers.
The Petitioner asserted that because the two businesses operate in same industry. customer, there was still a commercial tie.
It makes no difference if their trading routes varied and that there was a possibility of misunderstanding and deceit between both.
Petitioner’s request to require the defendant to keep records could be granted because there is no reasonable case inside its favour.
A order to keep accounts is not a regular order and it can be granted when Cutis Biotech has failed to establish a prima facie case. The court also noted there is yet another factor to consider in determining the ratio of ease.
The fact that “Covishield” is a Coronavirus vaccination is now generally recognised. An interim injunction ordering defendant to stop using the trademark “Covishield” for its vaccination may create frustration and interruption in the County’s Vaccination Administration Degree.
Thus, in this situation, granting an order will have far consequences that would extend beyond the parties to the complaint.