The US-based drug major Pfizer has received a favourable order in a trademark litigation against a Homoeopathy drug firm in India in connection with its erectile dysfunction drug Viagra, ending an almost 19 year-old dispute.
The court, while issuing an order that the homoeopathic drug Vigoura from Bihar-based Renovision Exports Pvt Ltd carries a trademark deceptively similar to that of Pfizer's product, observed that the Viagra had cross-border reputation even before the product was launched in the country were not countered by the Indian firm.
Justice Sanjeev Narula, in an order on May 1, decreed the suit in favour of Pfizer and against Renovision, permanently restraining the Indian firm or anyone acting on their behalf from manufacturing, selling, or offering for sale, marketing, advertising or in any other manner using the mark Vigoura or any mark deceptively similar to Pfizer's trademark Viagra in relation to any of their goods as it would amount to infringement or passing off of the registered mark of Viagra.
According to Pfizer, the company discovered in February 2005, that Renovision Exports was selling products described as nervine tonic for men and homoeopathic medicine invented in Germany, under the mark Vigoura, with various other variants. The company issued a cease-and-desist letter to Renovision in the same month, following which the latter raised a dispute against Pfizer's claims and asserted their rights in the trademark Vigoura. Pfizer also opposed Renovision's applications to register the trademarks.
Renovision claimed that the mark Vigoura a fanciful mark derived from the English term Vigour, and its mark is honest, genuine and bona fide. It argued that these products were first manufactured and marketed by the company in 1999. Various other entities have secured registration rights in trademarks that resemble the world Viagra for ayurvedic medicinal or pharmaceutical drugs, much prior to Pfizer, it argued.
The Court observed that Pfizer's claim over Viagra's trademark originates from its global introduction in 1995, followed by filing of an application for registration in India on July 18, 1996. Renovision's engagement with Vigoura trademark was nearly three years after this, on May 15, 1999, when they were granted a license by the Chief Licensing Authority, State Drugs Controller, Patna.
Observing that the mark Vigoura is phonetically, visually and conceptually similar to Viagra, the Court said that there exists a substantial potential for consumers to associate the two products.
"When consumers encounter different products with similar branding in the same retail context, the risk of assuming a common source or affiliation increases. Moreover, the concern in the present dispute is not solely the possibility of consumers confusing the products themselves i.e., thinking an allopathic drug is homoeopathic or vice versa, but more about them confusing their commercial source or assuming that they originate from the same entity or have the same level of efficacy due to similar branding. This is why even in different but related fields, maintaining distinct trademarks is crucial for clear communication to consumers and maintaining the integrity of brands in the marketplace," observed the Judge.
In view of the resemblances between the two trademarks and the overlap in field of use and commercial operations, as elucidated above, there is a strong potential of confusion amongst the general public, said the Court concluding that the mark Vigoura infringes the registered trademark Viagra.
Although Viagra was officially launched in the US in 1998 and in India only in 2005, Pfizer claimed that it had a transborder reputation as the mark was known across the countries through international media coverage which had a substantial circulation in India, thereby indirectly establishing its presence in the Indian market.
Considering Renovision's argument that there are other products which has similar mark to the trademark Viagra, the Court also observed that it is a well-established principle in trademark law that a Plaintiff’s decision not to pursue legal action against third parties who may possess marks similar to that of the Plaintiff does not preclude them from obtaining an injunctive relief against a specific Defendant in a case of trademark infringement.
The Court also ordered that Pfizer is entitled to nominal damages to the tune of Rs. 3,00,000, recoverable jointly and severally from the defendants.
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