Bombay High Court Junks Appeal By Cutis Biotech Against Serum Institute Over Covishield Trademark

The Bombay High Court on Tuesday dismissed the appeal filed by Cutis biotech, challenging an order by a Pune Commercial Court which rejected its trademark claim against Serum Institute of India for COVISHIELD.

A bench of Justices Nitin Jamdar and  CV Bhadang dismissed the appeal earlier today. 

Serum Institute of India was represented by Parinam Law Associate.

On January 30, a commercial Court in Pune had rejected the injunction application filed on behalf of CUTIS Biotech against Serum Institute of India, claiming Trademark "Covishield" of the Covi19 Vaccine.

Judge A V Rote rejected the application which had sought a perpetual injunction against Serum Institute of India for purposes of restraining it from using the trademark "COVISHIELD" or any other mark which is confusingly similar with the trademark COVISHIELD in respect of the goods which are same/similar/dissimilar with the goods of the plaintiff.

It was the case of CUTIS Biotech (plaintiff) before the commercial court that the word "covishield" was coined by it on April 25, 2020 and had further decided to use the same in respect of the pharmaceutical and other related products as well as apply for its registration as a trademark, following which it applied for its registration in class 5.

"The plaintiff's product, bearing the said trademark are being purchased by the members of trade and average consumers and popularised through advertisement, publicity, promotion and marketing. The plaintiff has spent and continues to spend money, time and efforts in advertising and promoting the products bearing the said distinctive trademark".
- Plaintiff's averments

Following this, the plaintiff contended that on December 7, it came across the news that the defendant (Serum Institute of India) had applied before the Drugs Controller General of India for immediate approval of vaccine which prevents Covid19 under the brand "Covishield" in India. 

The application further averred that a fresh cause of action had accrued against Serum Institute when the defendant, CUTIS Biotech visited the website of the defendant and had gained the knowledge that the director of the defendant Adar Cyrus Poonawalla had announced the launch of the vaccine to prevent Covid19 under the brand "Covishield".

On the other hand, the defendant's case was that the Plaintiff was guilty of suppressio veri and suggestio falsi as it has suppressed material facts from the Court. In this perspective, the defendants averred that the Plaintiff has only cursorily mentioned about the suit filed by the Plaintiff before the Hon’ble Principal District Judge at Nanded without disclosing complete and relevant facts, relating to an injunction application under order 39, rule 1 & 2 of the CPC. This, it was contended led to a precarious situation of forum shopping, effectuated at behest of the plaintiff.

Further, the defendant stated in its reply that the present suit for passing off did not stand the test of maintainability as the Defendant’s trademark “COVI SHIELD” had been bona fidely and honestly coined, used, marked and applied for with respect to “Vaccine for human use".

It was stated that "in these dire times, whilst Defendant is focused on inventing a life-saving vaccine, the Plaintiff has filed the said Application in the present Suit before this Hon’ble Court in order to gain undue advantage of Defendant’s reputation".