VIAGRA trademark belongs exclusively to Pfizer: Delhi High Court

The Delhi High Court has held that global pharmaceuticals giant Pfizer is the exclusive and registered proprietor of the trademark ‘VIAGRA’, a drug used to treat erectile dysfunction [Pfizer Products Inc v Renovision Exports Pvt Ltd and Anr]..Justice Sanjeev Narula ruled that Pfizer coined the term Viagra which has no dictionary meaning and the company’s continuous and bona fide usage of the mark along with online presence, corroborated by comprehensive oral and documentary evidence of international registrations, regulatory approvals and inclusion of the word Viagra in the Oxford dictionary, successfully proves Pfizer’s status as the proprietor of the “VIAGRA” trademark.“The culmination of these efforts in successful registration in India conclusively proves their [Pfizer’s] exclusive ownership as the registered proprietor of the trademark within Indian territory from the application date, establishing a legal presumption of validity and ownership that remains uncontested by the Defendants,” the Court said.It, therefore, permanently restrained a company named Renovision Exports Private Limited from selling its homeopathic medicine under the trademark “VIGOURA”.“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 ordered. .Justice Narula ruled that the mark VIGOURA is deceptively similar to VIAGRA and the defendants use of the mark amounted to passing off.The Court also ordered Renovision to pay ₹3 lakh to Pfizer as nominal damages..The Court passed the order on a case filed by Pfizer arguing that Renovision was selling products described as “Nervine Tonic for Men” and “Homeopathic Medicine Invented in Germany” under the mark “VIGOURA”.Subsequent investigations revealed that other variants of VIGOURA products such as VIGOURA 2000, VIGOURA 5000, and VIGOURA 1000 were also being sold by the defendant-company.Pfizer said that VIGOURA mark is deceptively similar to its well-established VIAGRA trademark and this similarity is an intentional attempt by the defendants to capitalize on the goodwill and reputation associated with VIAGRA..On the other hand, Renovision in its written statement said that its product VIGOURA 1000 focuses on vitality and regulating menstruation in women and is therefore, distinct from the Pfizer’s product, which addresses male erectile dysfunction and this renders the product “VIGOURA 1000” irrelevant to the present dispute.The company further said that VIGOURA 2000 and VIGOURA 5000 are homeopathic medicines formulated as non-steroid aphrodisiacs designed to stimulate metabolic processes and that Homeopathic medicines operate on different principles than conventional allopathic pharmaceuticals like Pfizer’s VIAGRA.It said that while VIAGRA is utilized for instant relief, VIGOURA demonstrates gradual effects after consumption for two to three months and, therefore, the difference in the composition and nature of the two medicines coupled with the fact that both are prescription drugs, reduces the likelihood of confusion for consumers..After considering the arguments, the Court ruled in favour of Pfizer and passed a permanent injunction order against Renovision..Advocates Bharat S Kumar and Sanidleya Meheshwari appeared for Pfizer.Renovision was proceeded against ex parte..[Read Judgment]