Win for Pfizer’s ‘Viagra’ trademark in Delhi HC against homeopathy remedy ‘Vigoura’ [Read Judgment]

NEW DELHI: In a win for Pfizer Products Inc.’s trademark and brand name on its erectile dysfunction allopathy drug ‘Viagra’, the Delhi High Court has permanently restrained one Renovision Exports Pvt. Ltd. (REPL) from the use of the mark ‘Vigoura’ for its homeopathy remedy for sexual disorders.

A single judge bench of Justice Sanjeev Narula also directed REPL to pay damages to Pfizer to the tune of Rs. 3 lakhs, alongwith litigation costs.

The bench directed that the “Defendants (REPL) or anyone acting on their behalf are permanently restrained from manufacturing, selling, or offering for sale, marketing, advertising, or in any other manner using the mark ‘Vigoura’ or any mark deceptively similar to the Plaintiff’s (Pfizer’s) trademark ‘Viagra’ in relation to any of their goods as would amount to infringement or passing off of the Plaintiff’s  (Pfizer’s) registered mark ‘Viagra’.”

Pfizer claimed that although ‘Viagra” was officially launched in the US in 1998 and in India only in 2005, its groundbreaking nature as a treatment for erectile dysfunction garnered extensive international media coverage from the outset.

The Court agreed that Pfizer’s strategic promotional activities at international medical and pharmaceutical conferences attended by professionals from around the world, including India, “facilitated the permeation of ‘Viagra’ reputation across national borders”.

The Court also noted that the trademark ‘Viagra’ is “highly recognized by its name in the sphere of erectile dysfunction drugs, as demonstrated by documentary and oral evidence placed on record. They have invested heavily in building a brand and owing to its success, ‘Viagra’ has acquired national and global repute.”

The Court also rejected REPL’s argument that there also exist multiple products with names similar to Vigoura, marketed in India much before Pfizer’s Viagra - such as Vigora, Vigourmalt, Vigor Plus, Vigora , etc - “with the only difference being that the said marks have been registered in ayurvedic system of medicine or for a different pharmaceutical preparation”. REPL argued that therefore it could not be said that its ‘Vigoura’ was violative of law.

The Court refused to accept this argument stating that it’s a well-established principle that a trademark holder’s decision not to pursue legal action against third parties who may possess similar marks does not preclude them from obtaining an injunctive relief against a specific holder of a deceptive trademark.

Further, while REPL contended that there are significant differences in Viagra’s allopathic treatment and Vigoura’s homeopathy treatment, the Court held that “unlike non-medicinal products, where confusion might only result in economic harm… confusion between medicinal products can pose serious risks to public health.”

Therefore, it held that it must apply “rigorous standards” in cases of similarities between medicinal products.

Justice Narula, therefore decided, “In the given scenario, the differences between homeopathic and allopathic treatments becomes less relevant than the overarching need to prevent misleading impressions about the product’s origin or affiliation. Given the critical nature of the medicines involved, which are designed to address sensitive health issues, the potential for deception is not only high, but also fraught with serious implications for consumer health and safety.”

Cause Title: Pfizer Products Inc. v Renovision Exports Pvt. Ltd. and Anr.
 

[Read Judgment]