Delhi High Court Rules in Favor of Pfizer in VIAGRA vs VIGOURA Trademark Dispute

Case 2: Pfizer Products Inc. v. Renovision Exports (P) Ltd.

Citation: 2024 SCC OnLine Del 3140
Court: Delhi High Court
Date Decided: 1 May 2024
Judge: Justice Sanjeev Narula

Background

Pfizer Products Inc., a globally recognized pharmaceutical company, holds the registered trademark “VIAGRA” for its sildenafil citrate-based medication used to treat erectile dysfunction. The trademark “VIAGRA” has been registered in India since 1996 and enjoys widespread recognition due to extensive marketing and media coverage.

In 2005, Pfizer discovered that Renovision Exports (P) Ltd. was marketing homeopathic products under the mark “VIGOURA,” including variants like “VIGOURA 2000,”“VIGOURA 5000,” and “VIGOURA 1000,” purportedly for treating sexual disorders. Pfizer issued cease-and-desist notices, but the defendants continued their activities, leading Pfizer to file a suit seeking a permanent injunction against the use of the “VIGOURA” mark.

Plaintiff’s – VIAGRA  Defendant’s- VIGOURA

Legal Issues

1. Whether the defendants’ use of the mark “VIGOURA” infringed upon Pfizer’s registered trademark “VIAGRA” under the Trade Marks Act, 1999.
2. Whether the phonetic and visual similarities between “VIAGRA” and “VIGOURA” could cause confusion among consumers, constituting passing off.
3. Whether such confusion between medicinal products poses a risk to public health, warranting judicial intervention.

Parties’ Contentions

Plaintiff (Pfizer Products Inc.):

• Asserted that “VIAGRA” is a well-known trademark with global recognition, registered in over 147 countries.
• Argued that “VIGOURA” is phonetically and visually similar to “VIAGRA,” leading to potential consumer confusion.
• Contended that the defendants’ use of “VIGOURA” constituted trademark infringement and passing off, especially given the identical therapeutic use.

Defendant (Renovision Exports (P) Ltd.):

• Claimed that “VIGOURA” was a distinct mark used for homeopathic products, differing in composition and treatment approach from “VIAGRA.”
• Denied any intention to deceive consumers or capitalize on Pfizer’s reputation.
• Argued that the products catered to different consumer bases and medical philosophies.

Decision

The Delhi High Court granted a permanent injunction in favour of Pfizer, restraining the defendants from:

• Manufacturing, selling, or marketing any product under the mark “VIGOURA” or any mark deceptively similar to “VIAGRA.”
• Engaging in any activity that would amount to infringement or passing off of Pfizer’s registered trademark.

Additionally, the court awarded nominal damages of ₹3,00,000 to Pfizer, recoverable jointly and severally from the defendants.

Ratio Decidendi

• The court observed a high degree of phonetic similarity between “VIAGRA” and “VIGOURA,” noting that such similarity could mislead consumers into believing an association between the two products.
• Emphasized that confusion between medicinal products poses serious risks to public health, beyond mere economic harm.
• Held that the visual similarities in letter structure and length further contributed to the likelihood of confusion.
• Concluded that Pfizer had established a strong case of trademark infringement and passing off.

LEGAL ANALYSIS

Principles of passing off under common law

Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(3)

• (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
• (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
• (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

Bibliography

• Pfizer Products Inc. v. Renovision Exports (P) Ltd. [2024] SCC OnLine Del 3140
• ‘Delhi HC grants permanent injunction in favour of Pfizer Products in a trademark dispute’ (SCC Online, 3 May 2024) https://www.scconline.com/blog/post/2024/05/03/dhc-grants-permanent-injunction-in-favour-of-pfizer-products-in-a-trade-mark-dispute-scctimes/