Pfizer Products, Inc. v. Renovision Exports Pvt. Ltd. & Anr.
A significant pharmaceutical trademark case concerning deceptive similarity between “VIAGRA” and “VIGOURA”, trans-border reputation, infringement and passing off.
Short Description About the Case
Pfizer Products Inc. sought protection for its well-known “VIAGRA” trademark against the defendants' use of “VIGOURA” for homeopathic medicines relating to sexual disorders. The Delhi High Court held that the marks were deceptively similar and that the defendant's use amounted to trademark infringement and passing off.
Facts
Pfizer had established substantial international reputation and goodwill in the “VIAGRA” trademark, which was associated with its erectile-dysfunction pharmaceutical product.
The defendants, Renovision Exports Pvt. Ltd. and another defendant, were manufacturing and marketing homeopathic products under the mark “VIGOURA”, including “VIGOURA 1000”, “VIGOURA 2000” and “VIGOURA 5000.”
Pfizer discovered the defendants' use in 2005 and issued cease-and-desist notices. The defendants disputed Pfizer's claim and asserted rights in their “VIGOURA” marks.
The defendants argued that their products were homeopathic whereas VIAGRA was an allopathic medicine, and therefore the nature and composition of the products were different.
Pfizer subsequently obtained registration of “VIAGRA” in India and also pursued its statutory infringement claim in addition to passing off.
Findings
The Court conducted a detailed comparison of “VIAGRA” and “VIGOURA.”
It found a high degree of phonetic similarity because both marks consisted of three syllables and shared the “Vi” beginning and similar “Ra” ending.
The Court also found significant visual similarity in the structure and length of the marks.
Importantly, the Court rejected the argument that the difference between allopathic and homeopathic medicines completely removed the possibility of confusion. The products targeted overlapping consumers and concerned sexual-health conditions.
The Court held that the defendants' “VIGOURA” mark infringed Pfizer's registered “VIAGRA” mark under Sections 29(1) and 29(2)(b) of the Trade Marks Act, 1999.
The Court also considered trans-border reputation, referring to authorities including N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc. and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.
Suggestion
This case is highly useful for matters involving:
Pharmaceutical trademarks
Deceptive similarity
Phonetic similarity
Visual similarity
Trademark infringement under Section 29
Passing off
Trans-border reputation
Well-known trademarks
Different forms of medicines
It is particularly useful where the defendant argues that different formulations, therapeutic purposes or systems of medicine eliminate the likelihood of confusion.
For practical trademark practice, this case strongly supports the proposition that the nature of the goods alone cannot save a deceptively similar pharmaceutical mark when the overall similarity and consumer confusion remain substantial.
Judgment
The Delhi High Court decreed the suit in favour of Pfizer and permanently restrained the defendants from manufacturing, selling, marketing, advertising or otherwise using “VIGOURA” or any deceptively similar mark to “VIAGRA.”
The Court also awarded ₹3,00,000 as nominal damages and directed payment of actual litigation costs.
