Violation of the Viagra Trademark
Pfizer initiated legal action before the Hon’ble Delhi High Court, requesting a permanent injunction to safeguard its trademark rights associated with “VIAGRA,” a widely acknowledged allopathic medication for erectile dysfunction. Additionally, Pfizer sought other remedies to halt Reno vision Export, the defendants, from promoting their homeopathic product named “VIGOURA,” utilized for treating sexual disorders.
The dispute between Viagra and Vigoura
The plaintiff, a prominent global pharmaceutical company renowned for its extensive range of animal and consumer healthcare products, as well as pharmaceuticals, gained widespread recognition for its innovative drug Sildenafil Citrate, marketed under the trademark “VIAGRA,” specifically developed to address erectile dysfunction. The success of “VIAGRA” stemmed from comprehensive publicity campaigns, media coverage, and educational initiatives aimed at informing both the public and medical professionals about its efficacy and benefits which resulted in the registration of the “VIAGRA” trademark in over 147 countries, solidifying its status as a globally recognized brand. In India, the trademark “VIAGRA” was registered in 1996 and subsequently renewed in 2006.
However, in February 2005, the plaintiff discovered that Defendant was marketing products labelled as “Nervine Tonic for Men” and “Homeopathic Medicine Invented in Germany” under the infringing mark “VIGOURA.” Further investigations revealed additional variants of “VIGOURA” products, such as “VIGOURA 2000,” “VIGOURA 5000,” and “VIGOURA 1000.” Despite receiving cease-and-desist letters from the plaintiff in March and May 2005, the defendants disputed the plaintiff’s claims, asserting their rights in the “VIGOURA” trademark.
The defendants argued that their products were distinct from the plaintiff’s, with “VIGOURA 1000” focusing on vitality and menstrual regulation in women, thus serving a different purpose. Meanwhile, “VIGOURA 2000” and “VIGOURA 5000” were formulated as homeopathic medicines acting as non-steroid aphrodisiacs, aimed at stimulating metabolic processes. The differences in composition and intended use, coupled with the prescription nature of both products, were asserted to mitigate the likelihood of consumer confusion.
In the present case, the Hon’ble Delhi High Court deliberated upon the following issues:
- Whether the Plaintiff is the proprietor of the trademark “VIAGRA”?
- Whether the Defendants are infringing the trademark of the Plaintiff “VIAGRA”?
- Whether the use of word “VIGOURA” by the Defendants amounts to passing off the goods as that of the Plaintiff?
- Whether other trademarks resembling and similar to the Plaintiff have been registered as alleged by the Defendants? If so, to what effect?
- Whether the Plaintiff is entitled to any damages? If so, to what extent?
- Relief
The Court expressed its view that the trajectory of the trademark’s evolution, starting from its inception as a coined term and its consistent and genuine usage, supported by substantial evidence including international registrations, regulatory approvals, and acknowledgment in the Oxford dictionary, effectively demonstrated the plaintiff’s rightful status as the proprietor of the “VIAGRA” trademark. The Court further noted that the culmination of these endeavours with the successful registration of the trademark in India decisively established the plaintiff’s exclusive ownership as the registered proprietor of the trademark within India from the date of application onwards.
The Court underscored that the plaintiff’s assertion of the ‘VIAGRA’ trademark traced back to its global launch in 1995, establishing precedence. Conversely, Defendant 1’s involvement with the disputed products under the ‘VIGOURA’ trademark commenced on May 15, 1999, upon receiving a license from the Chief Licensing Authority, State Drugs Controller, Patna. The Court stressed the importance for any entity planning to introduce a new trademark into the market to conduct thorough due diligence, including searching the national trademark database for any pending applications or registrations that might conflict with the proposed mark. Furthermore, the Court observed that the defendant’s awareness of the plaintiff’s mark and their failure to conduct even basic trademark screening undermined their claim of honest concurrent use.
Expanding on the similarity of the trademarks, the Court noted that both trademarks displayed a significant phonetic resemblance. This similarity stemmed from both marks consisting of three syllables, sharing ‘Vi’ as a common prefix and ‘Ra’ as a similar suffix. Such phonetic likeness raised considerable concerns, especially within the pharmaceutical sector, where accurate product identification was paramount for consumer safety and trust. The Court emphasized that the resemblance in sound had the potential to mislead consumers, leading them to perceive ‘VIGOURA’ as either a variant of, associated with, or endorsed by the creators of ‘VIAGRA’. This could result in erroneous purchases or the mistaken belief in comparable effectiveness.Top of Form
The Court noted that visually, both trademarks exhibited significant similarities in their letter structure and length, contributing to strong visual resemblances. It opined that the mere addition of numerals after incorporating almost the entirety of the plaintiff’s mark did not make the defendant’s mark distinguishable. Moreover, this visual resemblance was compounded by the conceptual link consumers might draw between the two, associating them with similar health benefits. Additionally, since the goods were targeted at the same segment of consumers, confusion between the two marks was highly probable.
Referring to the Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited case, the Court emphasized that the differences between homeopathic and allopathic treatments were less relevant compared to preventing misleading impressions about the product’s origin or affiliation. Unlike non-medicinal products, where confusion might only result in economic harm to the plaintiff, confusion between medicinal products could pose serious risks to public health. Given the critical nature of the medicines involved, designed to address sensitive health issues, the potential for deception was not only high but also fraught with serious implications for consumer health and safety.
Therefore, the Court issued a permanent injunction restraining the defendants or any party acting on their behalf from manufacturing, selling, offering for sale, marketing, advertising, or using the mark ‘VIGOURA’ in any way, or any mark deceptively similar to the plaintiff’s trademark ‘VIAGRA’ concerning any of their goods, as it would constitute infringement or passing off of the plaintiff’s registered mark. Additionally, the plaintiff was awarded nominal damages of Rs. 3,00,000, which would be recoverable jointly and severally from the defendants.
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