Case Note & Summary
The dispute concerns the trademark 'Covishield'. The appellant, Cutis Biotech, a sole proprietorship, filed a suit in the Commercial Court at Pune seeking an interim injunction to restrain the respondent, Serum Institute of India Pvt. Ltd., from using the trademark 'Covishield' and to maintain accounts. The Commercial Court rejected the interim application. Cutis Biotech appealed under Section 13 of the Commercial Courts Act, 2015. Neither party has a registered trademark for 'Covishield'. The appellant based its case on passing off under Section 27(2) of the Trade Marks Act, 1999. The court considered the principles for grant of interim injunction in passing off actions. It noted that the mark 'Covishield' is descriptive, being a combination of 'Covid' and 'shield', and the appellant failed to establish that the mark is exclusively associated with its goods. The court also considered the balance of convenience and public interest, noting that the respondent is a major manufacturer of the Covid-19 vaccine and an injunction would disrupt vaccine supply. The court dismissed the appeal, upholding the Commercial Court's order.
Headnote
A) Trade Marks - Passing Off - Unregistered Trademark - Section 27(2) Trade Marks Act, 1999 - The appellant sought interim injunction to restrain use of unregistered trademark 'Covishield' based on passing off. The court held that since the mark is descriptive and not exclusively associated with the appellant, no prima facie case for passing off is made out. (Paras 3-5) B) Trade Marks - Interim Injunction - Prima Facie Case - Balance of Convenience - The court found that the balance of convenience is in favor of the respondent, which is a major vaccine manufacturer, and that the public interest in uninterrupted vaccine supply outweighs the appellant's claim. (Paras 5-6) C) Trade Marks - Descriptive Mark - Distinctiveness - The mark 'Covishield' is derived from 'Covid' and 'shield', indicating a shield against Covid-19, and is descriptive. The appellant failed to show that the mark has acquired distinctiveness or secondary meaning. (Para 4)
Issue of Consideration
Whether the appellant Cutis Biotech is entitled to an interim injunction restraining the respondent Serum Institute from using the trademark 'Covishield' on the ground of passing off.
Final Decision
Appeal dismissed. Order of Commercial Court refusing interim injunction upheld.
Law Points
- Passing off
- unregistered trademark
- interim injunction
- prima facie case
- balance of convenience
- irreparable loss
- descriptive mark
- public interest
