Case : Cutis Biotech Vs Serum Institute of India Pvt. Ltd
APPEAL FROM ORDER NO. 53 OF 2021
Cutis Biotech, on 29 April 2020, filed an Application No.4493681 for registration of trademark ‘COVISHIELD’. This application is pending registration in the Trademark Office.
On 6 June 2020, Serum Institute applied for registration of trademark ‘Covi shield’ under Application No.4522244.
On 11 December 2020, Cutis Biotech filed Trademark Suit No.1/2020 in the District Court, Nanded seeking to restrain Serum Institute from using the mark ‘Covishield’ invoking the law of passing off. In this suit, Cutis Biotech sought an interim injunction to restrain Serum Institute from using the trademark ‘Covishield’ and maintain the accounts regarding the sale. The learned District Judge/ Commercial Court rejected the interim application.
To establish passing off by the respondent, the applicant must first establish goodwill and reputation attached to his goods and services. To establish goodwill, Cutis Biotech has claimed that from 30 May 2020 to 31 December 2020, its turnover was of Rs.16 lakh and it spent Rs.1.2 lakh towards advertisements.
Serum Institute contended that Cutis Biotech sold hand sanitizers and disinfectants, which products had high demand during the pandemic, the turnover of Rs.16 lakh for seven months is not significant. Cutis Biotech failed before the district court to establish goodwill.
Second issue before the court is likelihood of deception :whether the products of Cutis Biotech and Serum Institute are in the common field ? The District Court has held that the consumers of Cutis Biotech and Serum Institute are different, and the trade channels are also different. The vaccine ‘Covishield’ produced by Serum Institute is not available across the counter. The vaccine will be administered through Government agencies. The sale of disinfectant or hand sanitiser, though it may relate to the same field, that is, health care products, cannot be said to cause confusion in the mind of average consumers. The administration of vaccine through an injection is well known.
Since there is no prima facie case in favour of Cutis Biotech, its prayer to direct the Serum Institute to maintain accounts cannot be granted. A direction to maintain accounts is not a routine order and cannot be issued when there is no prima facie case made out by Cutis Biotech. Court also mentioned that, There is one more facet to be considered to determine the balance of convenience. That ‘Covishield’ is a vaccine to counter Coronavirus is now widely known. A temporary injunction directing Serum Institute to discontinue the use of mark ‘Covishield’ for its vaccine will cause confusion and disruption in the Vaccine administration programme of the State. In this case, thus, the grant of an injunction would have large scale ramifications traversing beyond the parties to the suit.
The Appeal is dismissed.