Delhi High Court Bars Use Of 'Vigoura' To Protect Pfizer's Brand 'Viagra'

The Delhi High Court, through its judgment in the case of Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. and Anr CS(COMM) 378/2018, dated May 1, 2024, has decreed the suit in favour of the US-based drug major Pfizer Products Inc. (plaintiff) by permanently restraining the Indian entity Renovision Exports Pvt. Ltd. (defendants) or anyone acting on their behalf from manufacturing, selling, or offering for sale, marketing, advertising or in any other manner using the mark 'Vigoura' or any other deceptively similar mark to the plaintiff's trade mark 'Viagra' in relation to any of their goods as it would amount to infringement or passing off the registered mark of Viagra.

Brief Facts

Pfizer Inc., USA granted the plaintiff the trademark rights to "Viagra" through a Deed of Assignment on June 3, 1999, with the associated goodwill. The plaintiff had also provided evidence which corroborates that "Viagra" is a uniquely coined term. The word had no pre-defined meaning, and it was subsequently included as a proper noun in the English dictionary due to its popularity and widespread recognition as a Pfizer product. It was also intrinsically unique and devoid of any descriptiveness, which complies with Section 9 of the Trademark Act. This further has been substantiated by 147 countries in which the mark has been registered.

The Defendants, however, had submitted that both the marks differ in terms of variations and products for which they are applied rather than challenging the mark's novelty or distinctiveness. The Court noted that the plaintiff acquired statutory rights in India on June 26, 2006. The culmination of comprehensive oral and documentary evidence of registrations in various countries and regulatory approvals proving Pfizer's exclusive ownership as a registered proprietor of the trademark within India from the date of application remained uncontested by the Defendants. As a result, this issue was decided in the favour of the Plaintiffs.

The plaintiff's claim originated globally in 1995 and in India since 1996, with the first commercial use in 2005. The Defendants were granted a license in 1999 by the Chief Licensing Authority, State Drugs Controller, Patna. By this time, the plaintiff had already applied for registration in India. The defendant's claim of honest and concurrent use was thus undermined due to the plaintiff's earlier use Globally and in India. It was observed that an applicant is required to be vigilant while filing their marks. Had the defendant been vigilant and undertaken the search prior to the adoption of the trademark "Vigoura", they would have discovered Pfizer's pending trademark application for "Viagra".

The plaintiff also claimed that the trade mark adopted by the defendants was deceptively, phonetically, structurally similar and confusing. It was a direct infringement of the plaintiff's trade mark and posed a threat to its market reputation and goodwill. The Defendants had disputed the contentions put forth by the plaintiff by highlighting the therapeutic differences between the two medications. While Viagra is an allopathic medicine, in a tablet form and provides instant relief intended only for male erectile dysfunction, Vigoura is a homeopathic medicine, in liquid form and a complete therapy originating from 100-year-old proven homeopathic practices for curing several other sexual problems.

They also contended that the word coined is not similar since Vigoura has been coined from the English word 'Vigour'. The Court noted that the customers often remember the more dominant and prominent parts of the trade mark rather than the whole intricate trade mark. Due to this, they often associate the goods with similar trademarks. In this case, the parties being pharmaceutical companies, trade mark infringement not only affects its goodwill and reputation, results in economic losses but also jeopardises the health of the public. The plaintiff had also satisfactorily discharged its burden of proof by producing ample documents as evidence that showed its trans-border reputation use and that a clear case of passing off was established.

On the question by the defendant that several entities, apart from the Plaintiffs, utilise the identical brand name "Viagra" in relation to Class 05 pharmaceuticals, the Court relied on the precedent set in the case of Essel Packaging Ltd. v. Sridhar Narra & Anr 2002 SCC OnLine Del 631, where it was held that the unauthorised use of a trade mark by others does not grant a carte blanche to the defendant to infringe upon the trade mark in question. Thus, the infringement and the need for injunctive relief are to be determined by the Defendants' actions alone, without consideration of third-party use that has not been contested by the plaintiff.

The plaintiff had requested a decree of damages against the defendants for jeopardising their reputation and goodwill, which resulted in economic losses. They valued their damages claim up to Rs. 20 lakhs. However, without any evidence as to the computation of damages, the Court granted them a nominal damage of Rs. 3 lakhs, believing it to be a reasonable amount, along with the litigation costs. Further, it restrained the Defendants from using or anyone acting on their behalf, from manufacturing, selling, or offering for sale, marketing, advertising or in any other manner using the mark 'Vigoura' or any other deceptively similar mark to the plaintiff's trade mark 'Viagra' in relation to any of their goods as it would amount to infringement or passing off of the registered mark of Viagra.

Conclusion

The Court had analysed the similarity between 'Viagra' and 'Vigoura' marks and concluded that the marks not only exhibited high degrees of phonetic and visual similarities but also posed a risk to public health since both of these medicines were aimed to be used for similar medical treatments which could mislead the consumers into believing that the defendant's mark(s) were either a variant of or associated with the plaintiff. Unlike non-medicinal trademarks, stricter measures are required to prevent confusion arising from the similarity of marks among medicines, as decided in Cadila Healthcare Ltd v. Cadila Pharmaceuticals 2001 (2) PTC 541 SC.

Furthermore, even when the mark 'Vigoura' was granted a license in India in 1999, the plaintiff had already launched its products under 'Viagra' in the US in 1995. Their intent to use the mark in India was expressed through their filing of the trademark application and their cross-border reputation, even if the products were not directly sold in India.

The ruling serves as a bulwark to protect consumers against unauthorised goods, fraud, and questionable marks that take advantage of the goodwill, labour, and reputation of the original entity.

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Mrs Manisha Singh
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