[This post is authored by SpicyIP intern Surabhi Katare. Surabhi is a recent graduate from Hidayatullah National Law University, Raipur. She is interested in IPR, media, and tech laws and wants to pursue a career in IP and allied areas. Her previous post can be found here.]
Viagra- the samples that never came back! Ever since the drug was first manufactured, it has been the center of curiosity and complexities. It is an amusing fact that the drug was being tested as a heart medication, but it did more, tempting patients to not return the remaining samples back to the lab. As it turns out the drug never goes out of (use and) news. For instance, see this post by Professor Basheer (here) for different issues surrounding the drug’s patent.
Recently, the allopathic blue pill Viagra found itself in yet another legal dispute, this time over trademark issues, with homeopathic red pill Vigoura. Much alike the iconic scene from ‘the Matrix’ in which the choice between the blue pill and the red pill was of remaining in ignorance or embracing the truth, the Delhi High Court was to decide upon a blue and red pill dilemma. However, the colour of the pill was not at the centre of the controversy (side note: In case anyone is interested in reading about colours, trademarks, and medicines/ medical devices, they can refer to this piece by Mr. Murali Neelakantan and Swaraj or Neelakantan et al’s newly published expanded piece in The Lancet today) rather, it pertained to the use of allegedly similar mark “Vigoura” by Renovision Exports (the defendant). Interestingly, the judgment (dated May 1, 2024) by the Delhi High Court covers multitude of legal intricacies of trademark regime, making this judgement a rich resource for a trademark law enthusiast seeking a holistic understanding of the subject.
Pfizer Products Inc., (the plaintiff) the manufacturer of Viagra adopted the name in 1995 and subsequently got it registered in 147 countries, including India in 2006 while the mark Vigoura was adopted by the Defendants in 1999. When the issues were framed in 2006, originally Pfizer focused on common law rights under passing off. However, in 2006, the “Viagra” trademark got registered in India and the reliefs sought were amended in 2008 to include protection against trademark infringement as well.
The Court began by determining that the plaintiff is the ‘registered proprietor’ as per Section 2(1)(v) of Trade Marks Act, 1999. The Court added that a proprietor is one who uses the trademark commercially and is entitled to common law rights. The plaintiff proved with evidence that the term Viagra is a uniquely coined word and is thus inherently distinctive for purposes of Section 9. It was further argued that the word is so well recognized that it has now been added to the Oxford English Dictionary. The Court in this regard observed that the inclusion in the English dictionary as a proper noun reflects its widespread recognition and popularity. However, could this also raise the question if “Viagra” has become a generic term? Does the inclusion of a word in a dictionary as a proper noun (not) make it generic and open for use by all? Unfortunately, the judgement doesn’t dive deep into these questions and accepted Pfizer’s arguments due to absence of any cogent evidence by the defendant.
It was highlighted that since the plaintiff has prior use, the defendant was duty-bound to conduct due diligence to be aware of existing trademarks especially if they are phonetically, conceptually or visually similar. The marks were held to be deceptively similar, for
- both have three syllables, the first and last of which are the same,
- the goods are being sold to the same segment of consumers,
- channels of trade,
- overall impression test as founded in Amritdhara Pharmacy v. Satya Deo Gupta suggests similarity.
The decision of Cadila Healthcare v. Cadila Pharmaceuticals was relied upon to reiterate that a more stringent approach is required when assessing likelihood of confusion between medical products to rule that allopathy and homeopathy are related fields thus, need to prevent misleading overarches the differences in the fields.
The Court also ruled that the defendant is liable for passing off, undermining the distinctive character and reputation of the plaintiff by applying the ‘classic trinity test’ as laid down in Laxmikant V Patel v. Chetan Bhai Shah. Moreover, on the basis of the multiple magazine article and newspaper reports, accessibility of plaintiff’s website from India, knowledge of mark among relevant segment of public etc. the Court agreed that “Viagra” had acquired trans-border reputation even before being introduced in the Indian market.
The defendant’s argument, seeking defense under use of similar trademarks by third parties, fell flat. The Court opined that “unauthorized use of a trademark by others does not grant a carte blanche to the Defendant to infringe upon the trademark in question.” The author believes that the defendant has failed to present crucial facts of their case, one being that the defendant’s mark was first used in 1999, more than 2 decades ago and has acquired distinctiveness of its own. Instead, the defendant has taken this misdirected argument, seeking defence from the fact that action has not been taken against others using similar marks.
While Pfizer also sought damages, they fell short in providing cogent evidence to substantiate their claim. In an otherwise meticulous legal strategy, the absence of any substantiating evidence and actual calculation of litigation costs brought down the damages from Rs. 20,00,000 as was claimed to Rs. 3,00,000, in favor of the plaintiff. It is indeed funny and painful to imagine the actual litigation costs that the plaintiff must have borne in the past two decades as against the nominal amount awarded by the Court.
