By Arpit Kalra and Pallavi Paul
Introduction
Time and again we have witnessed cases where rushing to file a trademark application and introducing the same in the market have led to conflicts, costly litigation and reputational damage. A well-researched and legally sound trademark not only protects the brand’s identity but also fosters consumer’s trust and supports long-term business growth. In the recent case of Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. and Anr[1], the Hon’ble Delhi High Court emphasized the importance of exercising due-diligence before applying for registration of a mark especially for pharmaceutical products with similar sounding names and the importance of cross-border reputation of trademarks.
Brief Facts
In the present case, Pfizer Products Inc (hereinafter referred to as the Plaintiff) is a leading global pharmaceutical company, primarily engaged in research, manufacture and sale of drugs for animal, consumer healthcare and pharmaceutical use. The Plaintiff adopted the mark ‘VIAGRA’ in 1995 for its revolutionary drug Sildenafil Citrate, developed to cure erectile dysfunction. The trademark ‘VIAGRA’ is a valid and subsisting registration in over 147 countries, including India. Registration of the mark ‘VIAGRA’ owned by the Plaintiff in India is tabulated hereunder:
| Trademark | Trademark Application No. | Date of Application | User Date | Class | Goods & Services | Status |
| VIAGRA | 710135 | July 18, 1996 | Proposed to be used | 5 | Pharmaceutical Compound for treating erectile dysfunction | Registered
(Valid and Subsisting till July 18, 2026) |
The defendant Renovision Exports Pvt. Ltd and Anr. (hereinafter referred to as the Defendants) is a registered oil company with a strong reputation for manufacturing homeopathic medicines which includes the drugs ‘VIGOURA’ and VIGOURA formatives such as ‘VIGOURA 1000’, ‘VIGOURA 2000’ and ‘VIGOURA 5000’.
The Plaintiff discovered in the year 2005 that the Defendants were marketing and offering for sale products under the name ‘Vigoura’ allegedly used for curing sexual disorders and filed a lawsuit against the defendant in the Hon’ble Delhi High Court. Initially, the suit was filed solely to safeguard the Plaintiff’s common law rights in the mark ‘VIAGRA’ however, upon securing statutory protection through registration of the mark ‘VIAGRA’ in 2006, the scope of reliefs was expanded, and they additionally alleged trademark infringement in addition to passing off. The Plaintiff also opposed the Defendant’s trademark applications for the name/mark ‘VIGOURA 2000’ and ‘VIGOURA 5000’ and while the suit was pending adjudication, the defendant’s marks were refused/abandoned by the Trade Marks Registry due to lack of prosecution.
Contentions of the Plaintiff
- The Plaintiff contended that ‘VIAGRA’ is a uniquely coined term with no pre-defined meaning in the English language or its standard dictionaries before its association with the medication, making it inherently distinctive and devoid of descriptiveness under Section 09 of the Trade Marks Act. Further, inclusion of the word ‘VIAGRA’ in the English dictionary as a proper noun reflects its widespread popularity yet without implying any pre-existing connotation related to its effects or purpose.
- The Plaintiff contended that the mark ‘VIGOURA’ is deceptively similar to their well-established mark ‘VIAGRA’ and the resemblance of similarity is further strengthened as both the marks share the following identical elements (i) they begin with ‘Vi’ and end with ‘Ra’; (ii) both the marks have three syllables; (iii) both the marks target the same consumer segments thus increasing the likelihood of association.
- The Plaintiff argued that not only the mark ‘VIGOURA’ constitutes infringement of their mark ‘VIAGRA’ but also jeopardizes the trust and recognition built around the brand ‘VIAGRA’ in the market. The Defendant’s adoption of the mark ‘VIGOURA’ compromises their exclusive right to utilize the ‘VIAGRA’ mark as a distinct originator of their erectile dysfunction product and further dilutes its distinctive character.
Contentions of the Defendants
- The defendant contended that homeopathic medicines operate on different principles than conventional allopathic pharmaceuticals like ‘VIAGRA’ thereby diminishing the probability of consumer confusion as the impugned medicines have different compositions and are designed to treat different ailments.
- The defendant also claimed that ‘VIAGRA’ has a denotative meaning while ‘VIGOURA’ is a coined term derived from the English word ‘VIGOUR’.
- The defendant argued that various entities have secured statutory rights in trademarks that resemble the word ‘VIAGRA’ for ayurvedic medicinal or pharmaceutical drugs falling under Class 05 much prior to the Plaintiff.
Analysis of the Court
The Hon’ble High Court observed that Plaintiff’s trademark ‘VIAGRA’ is highly recognizable by its name in the sphere of erectile dysfunction drugs and the defendant’s subsequent adoption of the mark ‘VIGOURA’ with the knowledge of the Plaintiff’s existence warrants an award of damages in the Plaintiff’s favor. Having said that, the Hon’ble High Court held the Defendants guilty of infringement and passing off and awarded damages of Three Lakh rupees (INR 3,00,000 i.e. approx. USD 3500)- to the Plaintiff citing the following reasons:
- Importance of Due-Diligence before applying for registration of a mark
The Hon’ble Court further emphasized the importance of exercising due-diligence, which entails searching the national database for any pending applications/registrations that might clash with the proposed mark before introducing the same in the market. The Hon’ble Court also opined that one must be aware of existing trademarks and pending applications (particularly marks that are phonetically, visually, conceptually) to the proposed mark in question in order to avoid infringement and stated that the Defendant could have avoided infringement if while adopting the mark ‘VIGOURA’ in 1999 they had conducted a prior trademark search that would have alerted them of the Plaintiff’s pending application for the ‘VIAGRA’ applied in 1996.
- Transborder Reputation of a mark
The assessment of claim of ‘passing off’ necessitates an evaluation of the mark’s reputation on a global scale. The principle of passing off on the basis of transborder reputation has been established by the Plaintiff by way of ample evidence such as trademark registration certificates in India and world over, FDA approval, extensive advertisement and promotional material of ‘VIAGRA’ in numerous magazines and journals, etc.
The principle of cross-border reputation recognizes that even if the product is directly not sold in India, but information of the same is accessible through print media targeting consumers interested in that category of goods, such exposure indicates the product’s reputation and recognition extend beyond its physical presence. In the present case, the Defendant’s adoption of the mark ‘VIGOURA’ in 1999 is tainted as the ‘VIAGRA’ mark already had widespread popularity and recognition attained via magazines, publications, media coverage, and online presence.
- Protection of the trademark’s distinctiveness and the prevention of consumer confusion regardless of inactions taken against other parties
The Hon’ble High Court while citing the case of Essel Packaging Ltd. v. Sridhar Narra[2] and Anr noted that the unauthorized use of a trademark by others does not grant a carte blanche to the Defendant to infringe upon the mark in question. 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 theirs does not preclude them from obtaining an injunction against a specific defendant in a case of trademark infringement.
Analysis
The judgement passed by the Hon’ble Delhi High Court in the present case summarizes that medicines do not need to be of the same kind to constitute infringement and passing off. Phonetic similarity often plays a critical role like in the present case wherein the names VIAGRA and VIGOURA sound so alike that the similar sounding names are bound to create possibility of miscommunication between doctors as well as patients. Moreover, this is not the first win for Pfizer in safeguarding its trademark ‘VIAGRA’. Earlier in 2009, the Hon’ble Delhi High Court had ruled in favour of Pfizer restraining B.L. & Co. from using or registering the mark ‘Penegra’ which was a similar drug used to cure erectile dysfunction.
An average consumer while purchasing a medicine from a pharmacy may be forgetful to check whether the medicine is allopathy or homeopathy. As cited in the case of Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd.[3] doctors and pharmacists, being human can also make mistakes and reliance solely on prescription might not prevent confusion and potential for harm to public health is much greater with medicines, so even a slight chance of confusion is unacceptable.
Additionally, when a mark is applied for medicinal purposes, the importance of cross-border reputation becomes even more crucial due to potential health risks and public interest concerns associated with pharmaceuticals. In such cases, the global reputation of a mark should be carefully considered during the application/registration process to prevent consumer confusion, maintain trust, and safeguard public health. As medicine is a sensitive field where even a slight phonetic or visual similarity between drug names can result in dangerous outcomes even if the medicines are used to cure similar ailments. Thus, strict scrutiny is required when assessing trademark applications in the pharmaceutical sector.
[1] CS(COMM)378/2018
[2] 2002 SCC OnLine Del 631
[3] 2001 SCC OnLine SC 578