Deepali Kalia –
Bombay High Court recently dismissed a plea which had sought to restrain Serum Institute of India (SII) from using the mark ‘COVISHIELD’ for its COVID 19 vaccines.
In December of 2020, Cutis Biotech had filed a suit for passing off before the District Court, Nanded in order to restrain SII from using the trademark. SII had then filed an application under order VII Rule 11(d) of the Code of Civil Procedure, 1908 (CPC) for rejection of the plaint on the basis of the fact that the suit was barred by law as it should’ve been filed as a commercial suit.
Thereafter, Cutis filed an application for withdrawal of Nanded Suit which is still pending.
On 4th January 2021, Cutis had filed a similar suit for passing off before the Pune District Court under the Commercial Courts Act but it was dismissed on the ground that Cutis failed to establish the main ingredients of a passing off action.
Finally Cutis filed an appeal before the Bombay High Court.
Cutis argued that there is a huge possibility of confusion arising between their products and that of SII and also that they had incurred huge loses as their suppliers had allegedly stopped supplying goods to them.
On the other hand SII contended that they had coined the trade mark in March of 2020 which is supported by ample proof in the form of documentary evidence that includes approvals from government authorities.
The High Court dismissed the plea on the grounds that SII was the prior user of the mark and that consumers of Cutis Biotech and SII are different.
It was also highlighted by the Bench comprising of Justices Nitin Jamdar and C.V. Bhadang that the vaccines ‘COVISHIELD’ are being administered by government agencies while the disinfectants or hand sanitizers are available across the counter hence the average customer in all likelihood will not be confused between them.
Most importantly, ‘COVISHIELD’ is widely known to be a vaccine to fight coronavirus and a temporary injunction directing SII to stop using the mark of ‘COVISHIELD’ for its vaccines is likely to cause a lot of confusion and disruption in the vaccine administration programme.