Court allows Serum Institute to retain the name “COVI SHIELD” for its SARS-CoV2 Vaccine

A commercial court in Pune on January 30, 2021 refused to pass interim injunction to restrain the Serum Institute of India(SII) from using the trademark "COVI SHIELD” for its vaccine against the present pandemic. The court adjudicated upon a passing off suit filed by a pharmaceutical Company “Cutis Biotech” against SII and had claimed to be the "lawful and prior user of the trade name “COVI SHIELD”.

The Court, while deciding upon the merits of the suit, held that the plaintiff could not prima facie prove the triple tests of the passing off a trade mark i.e. goodwill of the plaintiff, misrepresentation by the defendant and damages to the plaintiff.

The Court also took cognizance of the public interest involved in the said matter and held that owing to the fact that the present dispute involves the name of the highly anticipated vaccine against Covid-19, comparative balance of convenience lies in favour of the Defendant.

“Since last several months, not only India, but the world is facing the pandemic of Covid­19. All people are desperate to get a preventive medicine for said disease. Now, the defendant company and some other companies are manufacturing the vaccine for such deadly disease of Covid­19. It is a step towards control over the pandemic of Covid­19. Now, it is much desirable product and much awaited product by the people all over the country and all over the world. If, at this stage, defendant is restrained from using the trade mark of ‘Covishield’ and distributing this vaccine under the said trade mark, it would be great hardship to the people to identify the product of defendant. Therefore, comparative hardship and balance of convenience certainly lie in favour of defendant. On the contrary, if the interim injunction is not granted, the products of plaintiff still can be in the market and it can sell the product under its name as the purposes of products of plaintiff are totally different. Those are disinfectants for hand, surface and vegetable washing liquid and other purposes mentioned in their application. Comparatively, defendant and its customer would suffer great hardship than the plaintiff if the injunction is granted. Therefore, this point lies in favour of the defendant. Plaintiff has failed to prove the balance of convenience in its favour”

The court also noted that the Plaintiff cannot be entitled to monopolize a class when the actual goods between the disputing parties were dissimilar. “Though, plaintiff and defendant both have applied for the registration of trade mark ‘Covishield’ in Class­5 category, as per the ratio in the above said citations, if the plaintiff succeeds in getting the trade mark for the disinfectant spray, sanitizer etc., then also it does not mean that he would get monopoly for the goods in Class­5. The product of the defendant is the vaccine to prevent Covid­19 that too for human use. The visual appearance is different. The purpose of the product is different. The consumers of product may be different. In such scenario, the trade mark of ‘Covishield’ for the product of defendant cannot be said to be prima facie misrepresentation or confusion in the mind of people about the product of plaintiff”.

With SII shouldering the responsibility of vaccinating millions, this order serves as a huge sigh of relief, at least on the IP front!