COVID-19 Trademark

Tenability of Passing Off Action against ‘Covishield’ Vaccine of Serum Institute of India

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As you are aware of, Covishield, the vaccine candidate of Serum Institute of India was approved by Drug Controller General of India for restricted emergency use today. Pertinently, a passing off suit was filed against Serum Institute of India by a Nanded-based pharmaceutical company Cutis Biotech last month, which claimed to be the lawful and the prior user of the trade name ‘Covishield’. The trademark applications, which were filed by the Cutis Biotech and the Serum Institute of India, are pending before the Registry.

Legal Position

According to Section 2(zb) of Trade Marks Act, 1999, ‘trade mark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. The strength of a mark is directly proportional to its ‘distinctiveness’ i.e. its  inherent ability to distinguish itself from other marks and identify the source.

Broadly speaking, marks can be classified into generic marks (e.g. ‘Xerox’), descriptive marks (e.g. ‘Fair and Lovely’), arbitrary marks (e.g. ‘Apple’ for computers) and invented marks (e.g. ‘Zerodha’) in the ascending order of their strengths. Since generic marks cannot distinguish any longer, they cannot be registered as trademarks. Descriptive marks are those which immediately convey the ingredients or qualities or characteristics of the goods. Illustratively, ‘Fair and Lovely’ mark for the cream will immediately convey that it is a cosmetic product. On the other hand, arbitrary marks and invented marks are those which cannot logically explain the ingredients of qualities or characteristics of the goods. For example, ‘Apple’ or ‘Zerodha’ will not immediately convey the inherent characteristics or qualities of the concerned products / services (which are computers and stock trading business respectively).

My View

I checked the website of Cutis Biotech. From what I gather, the company is marketing a series of Covid-preventive products such as surface decontaminant, fruit and vegetable wash and antiseptic under the trade name ‘Covishield’. As the name indicates, these products ‘shield’ one from ‘Covid’. Therefore, I will place ‘Covishield’ under the category of descriptive marks. Descriptive marks are eligible for protection provided they lose their primary meaning and acquire secondary meaning; the primary meaning being the actual meaning of the mark and the secondary meaning being the source-identifying function. Illustratively, Cutis Biotech can obtain protection for ‘Covishield’ if (i) the mark loses its primary meaning of ‘shielding’ one from ‘Covid’; and (ii) enables the consumer to identify the source of the product as Cutis Biotech. This is a question of fact. (See our post on Bombay High Court’s judgment (2015) on descriptive marks and passing off here.)

As I see it, it may be an arduous task to prove that ‘Covishield’ has acquired a secondary meaning. This means that Curtis Biotech may have a heavier burden of proof in this case. Further, the Serum Institute may face a similar legal burden in terms of obtaining and defending trademark protection for ‘Covishield’ (if at all the mark reaches that stage).

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

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