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).

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2 thoughts on “Tenability of Passing Off Action against ‘Covishield’ Vaccine of Serum Institute of India”

  1. Cutis biotech, a Nanded based firm, is marketing surface decontaminant, fruit and vegetable wash, and antiseptic products under the name ‘Covishield’. The same brand name is being used by Pune based firm Serum Institute of India (SII) for trading COVID19 vaccine. The products of both these companies fall under Class 5 i.e., class for pharmaceutical products and veterinary. The term ‘Covishield’ is not registered as trademark by either of the companies, however, Cutis biotech had filed an application for this trademark prior to SII. The registration application for both the companies has neither been accepted or rejected by the authority. It is true that a mere application for trademark is not normally a sufficient basis for bringing an infringement action against a later right, but it must be a valid basis for opposition procedure. In such situation date of application for registration will be decisive in later court cases.
    A trademark should not be suggestive or descriptive of the goods applied for. If the mark is exclusively descriptive, it lacks distinctiveness and cannot be registered as trademark. Here, the term ‘Covishield’ used by both the companies merely means a product that shields/protects/prevents one from contracting COVID19 infection. However, it neither describes nor suggests the nature, quality, characteristic or origin of the product. For instance, ‘shield’ is a general term which can represent mask, sanitizer, disinfectant or vaccine that can act as preventive measure against COVID19 infection. Thus, the term can be eligible to serve as a trademark for the marketing of above-mentioned products manufactured by SII or Cutis. Here, Cutis biotech had made an application prior to SII and, thus, it can get exclusive priority right of using ‘Covishield’ trademark upon its registration.
    ‘Covishield vaccine’, manufactured by SII, is an indispensable product considering the on-going coronavirus pandemic situation. With the growing popularity of SII, consumers relate trademark ‘Covishield’ to a ‘vaccine’ and in turn directly to the manufacturer SII. In such a situation, Cutis’ Covishield products (surface decontaminant or vegetable wash) can falsely be assumed to be SII’s products by consumers. This can be bad for both the companies as it can affect SII’s reputation and Cutis might lose its prominence as a biotech company in the market. In order to justify the company’s repute in the market and protect consumer from being misled about origin/source company, the above companies, in this dispute, should consider settlement options for using potential trademark ‘Covishield’.

    Dr. Mrunmai Tapadia
    PhD, Curtin University
    PGD in Patents – NALSAR University

  2. Mathews P. George

    Dear Mrunmai

    Thank you for your comments. As I understand, as to check whether a mark is descriptive or not, it has to be seen in the context of the concerned product. Illustratively, marks such as “Fair and Lovely” and “Covishield” should not be evaluated in isolation from the concerned products. Instead, they should be evaluated in conjunction with the concerned products. For instance, consider the mark “Cold and Creamy” for icecream. When “Cold and Creamy” is seen in isolation, it may or may not indicate an ice cream. But when it is seen in conjunction with ice cream, the mark falls under the category of descriptive marks (since it describes the characteristic features of ice cream). [https://www.inta.org/fact-sheets/trademark-strength/#:~:text=Descriptive%20Marks.,AND%20CREAMY%20for%20ice%20cream.]. Now, “covishield” for a sanitiser or vaccine indicates the characteristic feature of these products i.e. ‘shielding’ one from ‘corona’. In other words, the test should be whether “covishield” is a descriptive mark for the sanitiser or vaccine as the case may be (and not whether “covishield” will independently indicate whether the product is a vaccine or sanitiser). For these reasons, to my mind, covishield is a descriptive mark.

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