Read Time: 08 minutes
The court noted that Pfizer had made extensive investments to establish the brand, resulting in the widespread national and international renown of ‘Viagra’
In a recent trademark infringement suit, the Delhi High Court held that Viagra was a distinct indicator of Pfizer's erectile dysfunction medication. Pfizer, a USA-based company, initiated an infringement suit against an Indian homeopathy company named Renovision Exports Pvt. Ltd (Renovision) for unauthorized use of the trademark ‘Viagra’.
The bench of Justice Sanjeev Narula held, “Plaintiff’s trademark 'VIAGRA' is highly recognized by its name in the sphere of erectile dysfunction drugs, as demonstrated by documentary and oral evidence placed on record. They have invested heavily in building a brand and owing to its success, 'VIAGRA' has acquired national and global repute”.
Represented by Advocate Bharat S. Kumar, Pfizer argued that ‘Viagra’ had gained widespread recognition in over 150 countries and was acclaimed as the top-ranking company by Fortune Magazine in 1998.
They asserted that ‘Viagra’ was associated with their groundbreaking drug, Sildenafil Citrate, designed to address erectile dysfunction, which had received approval from the United States Food and Drug Administration. Pfizer further emphasized the extensive media coverage and its establishment as a household name in India.
In 2005, Pfizer discovered that Renovision was marketing products under the name ‘Vigoura’, prompting Pfizer to send cease-and-desist letters. Renovision argued that their product, ‘Vigoura 1000’, aimed at vitality and menstrual regulation in women, was distinct from Pfizer's product for male erectile dysfunction.
Renovision further claimed that other entities held trademark registrations similar to ‘Viagra’ for Ayurvedic or pharmaceutical drugs before Pfizer. They argued that since the mark ‘Viagra’ was not assigned to Pfizer, they could not claim ownership of it.
The court determined that the issue concerned defining a ‘proprietor’ of a trademark. As per the Trademarks Act, “Registered proprietor’ is defined as the person recorded in the trademarks Register as the proprietor of the trademark. Thus, the registered proprietor is recognised as the lawful owner of the trademark, vested with exclusive rights to employ the trademark in association with specific goods or services”.
The court noted that such rights can be established through commercial use in the marketplace, leading to common law rights, or through formal registration with the Trademarks Registry. Therefore, “Proprietorship can be viewed as a spectrum – ranging from initial use in the marketplace to formal recognition by registration”, the court opined.
The court further noted that Pfizer provided uncontested evidence demonstrating that ‘VIAGRA’ was a unique term with no pre-existing meaning in the English language or standard dictionaries before its association with the medication, making it inherently distinctive and non-descriptive under Section 9 of the Trademarks Act. Additionally, registrations in over 147 countries, FDA approval for the drug, marketing materials, advertisements, and online presence further supported Pfizer’s claim of distinctiveness.
However, the court observed, "While the demonstration of originality establishes the initial claim to a trademark, that criterion alone is insufficient to prove legal ownership over it”. Pfizer had to demonstrate use and market recognition or registration within India. Pfizer’s application for registration further solidified its entitlement over the trademark, though it did not directly prove commercial use. The subsequent launch of the product in India demonstrated their claim of originality, ownership, and use.
The court, thus, held that Pfizer obtained statutory rights over the ‘VIAGRA’ trademark in India upon registration in 2006. Pfizer’s continuous and bona fide usage of the coined word ‘VIAGRA’, supported by international registrations, regulatory approvals, and inclusion in the Oxford dictionary, established Pfizer as the proprietor of the ‘VIAGRA’ trademark. The successful registration in India conclusively proved their exclusive ownership as the registered proprietor from the application date, establishing a legal presumption of validity and ownership uncontested by the Renovision.
Accordingly, the court disposed of the suit.
Case Title: Pfizer Products Inc. v Renovision Exports Pvt. Ltd. And Anr (2024:DHC:3476)
Please Login or Register
