Written by Aathmaja Menon and Sunil Jose of Suns Legal Patent & Trademark Lawyers. Originally published in The Trademark Lawyer Magazine on Jun 6, 2024. (https://trademarklawyermagazine.com/delhi-high-court-holds-vigoura-too-similar-to-pfizers-viagra-trademark/ )
PFIZER PRODUCTS INC. Vs RENOVISION EXPORTS PVT. LTD. AND ANR.
CS(COMM) 378/2018 (2024: DHC:3476)
In the bustling world of pharmaceuticals, where brand names hold immense value, a fierce legal battle unfolded between “Pfizer” Products Inc. and Renovision Exports Private Limited. The dispute centered on Pfizer’s well-known trademark, “Viagra.”
Plaintiff Pfizer Products Inc. (“Pfizer”) is an international pharmaceutical corporation, holding trademark rights for the allopathic drug “Viagra,” which is used to treat erectile dysfunction. The defendant, Renovision Exports Private Limited (“Renovision”), has been marketing a homoeopathic medicine under the trademark “Vigoura,” which is used for the treatment of sexual disorders.
In February 2005, Pfizer discovered that Renovision was selling products described as “Nervine Tonic for Men” and “Homeopathic Medicine Invented in Germany” under the infringing mark “Vigoura” and its variants. Pfizer filed a suit against Renovision, alleging that their “Vigoura” mark is deceptively and confusingly similar to Pfizer’s well-known “Viagra” trademark.
According to Pfizer, they adopted the trademark “Viagra” in 1995, and the drug was introduced to the US market in 1998. In a short span of seven years, Pfizer accumulated worldwide revenue of approximately USD 10,000 million. Pfizer successfully registered the “Viagra” trademark in over 147 countries, establishing it as a globally recognized brand. In India, the mark “Viagra” has been registered with effect from 1996 under No. 710135 in Class 05 for “Pharmaceutical Compound for Treating Erectile Dysfunction.”
Pfizer claimed that extensive publicity and media coverage have made the trademark “Viagra” a household name both globally and within India. They claimed that the widespread global use of the trademark “Viagra” extended the mark’s reputation to India, even prior to its official launch within the country.
The defendants argued that their products, “Vigoura 1000,” “Vigoura 2000,” and “Vigoura 5000,” are distinct homeopathic medicines with different purposes. They contended that unlike Pfizer’s “Viagra,” which provides instant relief, the gradual effects of “Vigoura” occur over two to three months and that the composition and nature of these medicines, along with their prescription status, reduce the likelihood of consumer confusion. The defendants contended that their products have a substantial market history. “Vigoura 2000” was first manufactured and marketed by the defendants in 1999.
The Court found that the evidence presented by Pfizer established that the term “Viagra” is uniquely coined, devoid of pre-existing meaning, and inherently distinctive. Pfizer’s international registrations further affirmed its distinctiveness. Their application for trademark registration of “Viagra” in 1996 indicated intent to use the mark in India. The Court held that the trademarks “Vigoura” and “Viagra” share both phonetic and visual similarities. The common prefix “Vi” and similar suffix “Ra” create an auditory resemblance, which could confuse consumers. Visually, the letter structure and length of both marks contribute to their likeness. The addition of numerals in “Vigoura” does not sufficiently distinguish it from “Viagra.” Despite any intended distinctions between allopathic and homoeopathic remedies, consumers may still associate the two products due to the shared context of pharmaceutical products. Due to the similarities between the two marks and their overlapping use in commercial operations, there is a strong likelihood of confusion among the general public. As a result, the court found that the defendants’ use of “Vigoura” infringes on the plaintiff’s trademark rights under the Act.
Authors’ Comments
At the heart of this dispute lies the delicate balance between brand protection, consumer confusion, and the distinctiveness of pharmaceutical trademarks. The Court pointed out that the concern in the present dispute is not solely the possibility of consumers confusing the products themselves, i.e., thinking an allopathic drug is homeopathic or vice versa, but more about them confusing their commercial source or if they originate from the same entity or have the same level of efficacy due to similar branding. This initial confusion can occur regardless of the consumer’s overall awareness or knowledge of the differences between allopathic and homeopathic remedies. The Court emphasized that even in different but related fields, maintaining distinct trademarks is crucial for clear communication with consumers and maintaining the integrity of brands in the marketplace. Whether it’s a blue pill or a homoeopathic tonic, the name matters.