The High Court Of Delhi Ordered A “permanent Injunction” Against A ‘homoeopathic Oil’ Manufacturer Prohibiting The Sale Of Products Under The Brand Name “vigoura”.

CAUSE TITLE:

Pfizer Products Inc. V. Renovision Exports Pvt. Ltd. and Anr.

DATE OF ORDER:

01st May 2024

JUDGE(S):

Single Bench of Hon’ble Mr Justice Sanjeev Narula

PARTIES:

Petitioner: Pfizer Products Inc.

Respondent: Renovision Exports Pvt. Ltd. and Anr.

SUBJECT:

The Single bench of the Hon’ble Justice Sanjeev Narula held in this “Trademark” case by granting a “Permanent Injunction” against respondent “Renovision Exports” who is the “Homeopathic oil manufacturer”, the court here ordered the effective halting of their sale of products under the “Vigoura”.  This decision was in the light of Pfizer Products (Plaintiff) to protect their trademark in “Viagra”, a globally renowned allopathic medication for erectile dysfunction, the plaintiff seeks to prevent Respondent manufacturer from marketing their homoeopathic medicine under the ‘confusingly similar’ trademark “Vigoura”, purportedly used for ‘curing’ sexual disorders. This case highlighted the allegation against the Respondent, that they are promoting products under the infringing mark “Vigoura”. Justice Narula, overseeing the case, emphasized the widespread recognition of the “Viagra” trademark in the realm of erectile dysfunction drugs, both nationally and internationally. 

IMPORTANT PROVISIONS:

Paris Convention for the Protection of Industrial Property (amended on 28 September 1979)

• Article 6bis – Well Known Marks – This article observes that member countries of the Union commit to refusing or cancelling trademark registrations and prohibiting confusingly similar marks, either ex officio or upon request, this applies when the mark in question is “well-known” in the country of registration or use and reproduces, imitates, or translates another well-known marks used for similar good/products. A five-year period is allowed for requesting cancellation of such marks, and countries may set timeframes for requesting prohibition of use. 

Code of Civil Procedure, 1908

• Injunction – An injunction, ordered by the court, is a legal solution, essentially it requires one party involved in a case to either take a specific action or refrain from doing something. Once the court issues its decision, both parties must comply. Failure to follow the injunction can lead to severe financial consequences or even imprisonment in certain cases. Precedents concerning injunction are specifically outlined in “Specific Relief Acts”, and “Civil Procedure Code” (particularly Section 151 and Section 94 of the code encompass the regulations regarding this provision)
• Permanent Injunction – A permanent Injunction is issued upon reaching the final judgement of the case, it provides conclusive relief to the applicant. These injunctions endure as long as the circumstances that necessitated them remain unchanged. (Section 36 & 37 of the Specific Relief Act, 1963)
• Order VI Rule 17 – Amendment of Pleadings – During the proceedings, the court may allow “either party” to modify or revise their “pleadings” if it is considered fair and just to do so. The purpose of such amendments should be to clarify the actual dispute between the parties. However, amendments will not be permitted after the trial has commenced unless the court determines that the party could not have raised the issue despite making diligent efforts before the trial began. 

Trademarks Act, 1999

• Trademark – Under Section 2(m) of the Trademarks Act, it defined that trademark encompasses various elements such as brands, logos, headings, labels, names, words, signatures, shapes of goods, numerals, packaging, or combinations of colours, among others. A trademark serves as a visual symbol or logo indicating the origin of products or goods. This symbol of a logo can take various forms, including words, signatures, numbers, shapes, monograms, combinations of words and numbers, combinations of colours with a logo, or even sound marks. 
• Section 9 – Absolute grounds for refusal of registration – Trademark registration follows specific rules. First, if a mark doesn’t stand out or can't tell one product or service from another, it can't be registered. Also, if a mark only describes a product’s qualities or where it's from, it can't be registered, the same goes for marks using common words or practices. However, there are exceptions if a mark becomes well-known through use. Second, marks that might trick or confuse people, offend religious feelings, or have unethical elements, can't be registered. Lastly, I like showing the shape of a product because it's just how it is, or because it's needed for its function, or because it's very valuable and can't be registered either. 
• Section 18(1) – Application for Registration – Anyone asserting ownership of a trademark currently in use or intended for use must submit a written application to the “Registrar” in the prescribed format to initiate the registration process for said trademark. 
• Section 29 – Infringement of Registered trademarks – If an unregistered individual or entity, not authorised by the registered proprietor or licensed user, employs a mark that is identical or deceptively similar to the registered trademark in connection with goods or services covered by the registration, and in a manner that could lead to confusion regarding its commercial origin, it constitutes infringement. 
• Section 29(2)(b) – In the realm of trade, infringement of a “registered trademark” occurs when an individual, not authorised as the proprietor permitted usage, utilises a mark in commerce. This mark, due to its resemblance to the registered trademark and the similarity or identity of the goods or services it represents, is likely to confuse. 
• Section 34 – Saving for vested rights – This section says that if someone has been using a particular trademark for goods and services before someone else registered a similar trademark, the first user can keep using it. Even if the second trademark gets registered, the first user can still use theirs.  
• Section 38 – Assignability and Transmissibility of registered trademarks – Regardless of any other precedent, a registered trademark can be transferred to someone else, either with or without the associated business’s reputation. This transfer can cover all the goods or services related to the trademark or just some of them, depending on the agreement. 

BRIEF FACTS:

• In the year 1995, Pfizer introduced the trademark “Viagra” for its ground-breaking medication “Sildenafil Citrate” designed to treat erectile dysfunction. Upon approval by the Food and Drug Administration (FDA) on March 27, 1998, Viagra was launched in the U.S. Market in 1998. 
• In February 2005, Pfizer discovered that Defendants, trading as “Renovision Exports”, were selling products labelled as “Nervine Tonic for Men” and “Homeopathic Medicine Invented in Germany” under the infringing mark “Vigoura”. Further investigation revealed variants like “Vigoura 2000”, “Vigoura 5000” and “Vigoura 1000”. 
• Following the plaintiff's submission of an application under Order VI Rule 17 of the Code of Civil Procedure, 1908 in the year 2008, they sought to amend the plaint to include the registration of the trademark “Viagra” in favour of Pfizer. 
• On July 25, 2008, the court granted the application, deeming the proposed amendments essential for the fair resolution of the case. The “recording of the evidence” concluded on October 12, 2015, and the case progressed to the final hearing stage. 
• After reaching the final stage of the case from January 2023 the counsel for the defendant appeared and contended that these products target various ailments, “Vigoura 1000 and others” primarily addresses vitality and menstrual regulation in women, making it distinct from Pfizer’s product for male erectile dysfunction. 

QUESTIONS RAISED:

• Whether the Defendants are violating the registered trademark “Viagra” owned by the plaintiff?
• Does the Defendant’s use of the “Vigoura” mark constitute passing off their goods as those of the Plaintiff?

ARGUMENTS ADVANCED BY THE APPELLANT

• The Counsel appearing on behalf of the Petitioner vehemently submitted in 1995, Pfizer introduced the trademark “Viagra” for its ground-breaking medication “Sildenafil Citrate” designed to treat erectile dysfunction. Upon approval by the Food and Drug Administration (FDA) on March 27, 1998, Viagra was launched in the U.S. Market in 1998. 
• It was argued that, even before its introduction and FDA approval in the USA, the “Viagra” drug garnered significant media coverage in esteemed publications like Newsweek Magazine, USA Today and the New York Times. The anticipated launch of “Viagra” also became a subject of discussion. 
• The counsel argued that the defendant's “Vigoura” mark bears a deceptive resemblance to Pfizer’s well-established “Viagra” trademark. This resemblance appears to be a deliberate effort by the defendants to exploit the “goodwill” and reputation associated with “Viagra”. 
• The counsel also argued that both “marks” share similar characteristics: they begin with ‘Vi’ and end with ‘Ra’, and consist of three syllables, making them phonetically similar. 
• The counsel also contended that both products cater to the same consumer segment seeking remedies for medical conditions, there is an elevated “risk of confusion” regarding the origin and affiliation of the products.

ARGUMENTS ADVANCED BY THE RESPONDENT

• The counsel appearing for the respondent contended that their product serves different medical purposes that “Vigoura 1000’ is tailored to enhance vitality and regulate menstruation in women, thus distinct from the plaintiff's product addressing male erectile dysfunction therefore “Vigoura 1000 and others” is not pertinent to this dispute.
• The counsel for the respondent argued that the adoption of the defendant's “Vigoura” mark is sincere and genuine that it was done in “good faith”, that it is a creative mark “derived from the “English term Vigour” and that the impugned product has a substantial market presence, with “Vigoura 2000 and others” being initially produced and marketed by the defendants in 1999.
• The counsel argued that several other entities have obtained trademark registrations resembling the term “Viagra” for Ayurvedic Medicinal or pharmaceutical drugs falling under “Class 05” predating Pfizer’s registration. In support of this statement, the written statement lists registration held by third parties for marks such as “Vigoura”, “Vigoura Plus” and “Vigoura Malt”. 
• Thus, the counsel contended the mark “Viagra” has not been assigned to the plaintiff by its owner Pfizer Inc., therefore, the plaintiff cannot assert ownership over the said mark. 

JUDGEMENT ANALYSIS

• The single bench of Justice Narula found that “Viagra" had acquired a significant reputation and goodwill in the market. "The Plaintiff has valued their damages’ claim at Rs. 20 lakhs, however, no evidence has been led to prove the damages. PW-1, in her affidavit by way of evidence or cross-examination, has not deposed anything on damages except for stating that Defendants’ adoption was in bad faith with an effort to take unfair advantage of the Plaintiff’s goodwill and reputation, The Defendants or anyone acting on their behalf is permanently restrained from manufacturing, selling, or offering for sale, marketing, advertising, or in any other manner using the mark “VIGOURA” or any mark deceptively similar to the Plaintiff’s trademark “VIAGRA” in relation to any of their goods as would amount to infringement or passing off of the Plaintiff’s registered mark “VIAGRA” it said. 
• The judge also found that the similarity in sound between “Vigoura” and “Viagra” raises significant concerns in the pharmaceutical industry, where precise product identification is crucial for consumer safety and confidence. The phonetic resemblance could lead consumers to believe that “Vigoura” is either a variation of, associated with, or endorsed by the makers of “ Viagra”, potentially resulting in mistaken purchases or belief in equivalent efficacy. 
• The judge also noted that ‘visually’, the trademarks “Viagra” and “Viagoura” share notable similarities in letter structure and length, contributing to strong visual resemblance. The initial alphabets “Vi” in both marks are likely to capture consumer attention due to their prominent placement and shared context of pharmaceutical products. 
• The judge also noted that the overall length of the words and similar letter arrangements can confuse, especially in environments where consumers make quick decisions, such as online searches or pharmacy purchases. 
• The judge contended that the addition of numerals “1000”, “2000” and “5000” after embodying almost the entirety of the plaintiff’s mark does not render the defendant's mark distinguished from the plaintiff's mark. 

CONCLUSION

In conclusion, in this trademark case, the court granted a ‘permanent injunction’ against the respondent, ‘Renovision Exports’ stating their sale of products under the “Vigoura” mark. It's essential to consider whether goods or services offered under both marks are identical or similar. Trademark law primarily aims to prevent consumer confusion regarding the source or sponsorship of goods and services. When assessing the likelihood of confusion between trademarks, it is important to consider that consumers generally rely on the overall impressions or prominent details of a mark rather than retaining a photographic memory of the entire trademark. Thus, the similarity between the two trademarks is evaluated not in isolation but in the context of their market use.