The Delhi High Court has issued a permanent injunction against the use of the “Vigoura” mark by a homeopathic drug manufacturer for the sale of its medicine for sexual disorders.
The court’s decision was made in response to a trademark infringement lawsuit filed by Pfizer Products Inc., a company that markets a well-known erectile dysfunction allopathic drug under the “Viagra” trademark.
Confusion?
Justice Sanjeev Narula, citing strong potential for confusion between the two names due to their resemblance and overlap in commercial operations, directed Renovision Exports Private Limited to refrain from using “Vigoura” or any other mark that is deceptively similar to Pfizer’s trademark “Viagra.”
Furthermore, it was ruled that the plaintiff shall be entitled to nominal damages of Rs 3 lakh, recoverable jointly and severally from the defendant entity.
“The defendants 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 trademark ‘VIAGRA’ in relation to any of their goods as would amount to infringement or passing off of the plaintiff’s registered mark ‘VIAGRA’,” the court stated.
“The Plaintiff’s trademark ‘VIAGRA’ holds significant recognition within the domain of erectile dysfunction drugs. Through substantial investments in branding, ‘VIAGRA’ has achieved both national and global renown. Consequently, the defendants’ adoption of the impugned mark, with knowledge of the plaintiff’s existence, justifies damages awarded in favor of the plaintiff,” the court stated.
Pfizer’s Status
It noted material evidence establishing Pfizer’s status as the proprietor of the “Viagra” trademark, further reinforced by its successful registration in India, affirming its exclusive ownership of the mark in this jurisdiction.
The court emphasized that “Vigoura” and “Viagra” bear a high degree of phonetic similarity, potentially misleading consumers into assuming the former is a variant of or endorsed by the makers of “Viagra.”
Moreover, the judge highlighted the comparable lengths of the words and their similar letter arrangements, which could lead to confusion, particularly in contexts where consumers make rapid decisions, such as online searches or pharmacy purchases.
The judge elucidated, “This initial confusion may persist irrespective of the consumer’s awareness or understanding of the distinctions between allopathic and homeopathic remedies. In such instances, while consumers may discern differences in treatment types, the resemblance in intended ailment and trademarks can foster an association between the products, based on perceived endorsements or recommendations.”
“Considering the resemblances between the two trademarks and their overlapping fields of use and commercial operations, as delineated above, there is a significant potential for confusion among the general public. Consequently, the court rules in favor of the plaintiff and against the defendants, affirming that the defendants’ ‘VIGOURA’ mark infringes the plaintiff’s registered ‘VIAGRA’ mark under sections 29(1) and 29(2)(b) of the Trademarks Act,” the court concluded.
