Passing Off claim rejected, Serum Institue’s ‘Covishield’ cannot be confused with hand sanitizers bearing the same name: Bombay High Court

Order of injunction in passing off cases ensures that no one should present his goods and services to the customers as of another party with goodwill in respect of the same and seek benefit therefrom. To grant an injunction both ingredients of injunction, i.e., prima facie case and balance of convenience should exist in favour of the applicant and these factors will be considered cumulatively and not as standalone grounds. This remarkable judgment was passed by the Bombay High Court in the matter of CUTIS BIOTECH V SERUM INSTITUTE OF INDIA PVT. LTD [APPEAL FROM ORDER NO. 53 OF 2021] by Honourable Justice Nitin Jamdar and Justice C. V. Bhadang.

The subject matter of this Appeal is the trademark ‘Covishield’ which is the vaccination for covid 19. Both, the Appellant and the Respondent have applied for registering this trademark, and their applications are currently pending. The appellants have sought an interim injunction to restrain Serum Institute from using the trademark ‘Covishield’ and maintain the accounts regarding the sale, which was previously rejected by the District Judge of the Commercial Court. Hence, the appellants have appealed in the HC under section 13 of the Commercial Courts Act, 2015.

The HC asserted that currently neither Appellants nor Respondents have a registration for the trademark ‘Covishield’ and Sub Section (1) of Section 27 of the Trade Marks Act, 1999 mandates that no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark. However, the appellants have based the present case on passing off since there is no registered trademark and relied on sub-section (2) that remedies to prevent passing off actions.

Earlier, Cutis Biotech had filed an application for registration of trademark under Class-5 for veterinary, Ayurvedic, allopathic, medicinal, and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals whereas SII applied for registration of a trademark for a vaccine under Class-5. The Ministry of Health and Family Welfare, Government of India, on 10 December 2020, published the COVID-19 vaccine procedure, which referred to the trademark of SII ‘Covishield’ and on 11 December 2020, Cutis Biotech filed a Trademark Suit and another application in the Trademark Registry for registration of trademark ‘Covishield’ in Class-5 for a vaccine for human use and others under the class.

The District Court held that there was no dishonest deception since products and their visual appearance was different well as there are different trade channels. The Court also considered the implications of the grant of such injunction since the situation brought about by the pandemic required immediate attention and the importance of the vaccine for the general public is indispensable.

The Court observed that “evidence produced by Cutis Biotech to demonstrate that it has been using the trademark ‘Covishield’ before the application of Serum Institute are not sufficient and do not have adequate details to establish a prima facie case whereas the respondents have adequate evidence to support their case.

Additionally, the HC stated that “If there is no probability of any deception, it would be a factor to decline injunction since confusion should arise in the minds of the customers of average intelligence and imperfect recollection.” In this case, confusion will not be caused since the buyer of the product, vaccine ‘Covishield’ is Government of India whereas the sale of disinfectant or hand sanitizer ‘Covishield’ might be related to the same field, that is, health care products, but cannot be said to cause confusion in the mind of average consumers.

Also, the HC added that the vaccine ‘Covishield’ has been rolled out as an extensive vaccine administration program not only nationwide but also has been supplied to over seventy-two different countries. Thus, it is evident that the balance of convenience is not in favour of Cutis Biotech but SII.

Thus, the appeal was dismissed by the HC since the learned District Judge’s refusal to grant an injunction was not arbitrary or perverse.

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