Delhi HC slaps Rs 3 lakh fine on drugmaker for violating Pfizer trademark of Viagra

In a detailed judgment, the high court emphasized the significant potential for confusion between 'Vigoura' and 'Viagra', citing phonetic similarity that could mislead consumers into believing that 'Vigoura' was either a variant of or endorsed by the makers of 'Viagra'. Consequently, the court granted Pfizer nominal damages of Rs 3 lakh, reinforcing Pfizer's exclusive ownership of the 'Viagra' trademark.

Justice Sanjeev Narula noted the unique creation of the term 'Viagra' and its subsequent association with the medication. Pfizer's consistent and lawful use of the mark, along with international registrations, regulatory approvals, and inclusion in reputable dictionaries, further affirmed its rightful ownership of the 'Viagra' trademark in Indian jurisdiction.

The legal dispute arose when Pfizer challenged Renovision Exports Private Limited for marketing products labelled as "Nervine Tonic for Men" and "Homeopathic Medicine Invented in Germany" under the 'Vigoura' mark. Despite Renovision's claims of distinction based on composition and intended use, the court determined that the 'Vigoura' mark's deceptive similarity to 'Viagra' constituted trademark infringement and passing off.

Deliberating the case, the court observed;

"The trademarks "VIGOURA" and "VIAGRA" exhibit a high degree of phonetic similarity. Both marks are comprised of three syllables, with 'Vi' as a common prefix and 'Ra' as a similar suffix, producing a strikingly similar auditory impression. This phonetic resemblance is particularly concerning in the pharmaceutical industry, where the precise identification of products is crucial for consumer safety and confidence. The similarity in sound could mislead consumers into believing that "VIGOURA" is either a variant of, associated with, or endorsed by the makers of "VIAGRA," potentially resulting in mistaken purchases or the belief in equivalent efficacy."

"To conclude, the Defendants' trademark "VIGOURA" is held to be deceptively similar to the Plaintiff's trademark "VIAGRA". In view of the resemblances between the two trademarks and the overlap in field of use and commercial operations, as elucidated above, there is a strong potential of confusion amongst the general public. Thus, the Court answers this issue in favour of the Plaintiff and against the Defendants, holding that Defendants' "VIGOURA" mark infringes the Plaintiff's registered "VIAGRA" mark under Sections 29(1) and 29(2)(b) of the Act."

"Defendants' trademark "VIGOURA" and its formative marks have a high likelihood of causing confusion, particularly in view of the fact that the impugned mark is being issued for similar pharmaceutical products. There is thus apparent danger of the public getting confused, or at least wondering, whether the products marketed under the impugned "VIGOURA" mark are associated with the products of Plaintiff (Pfizer). These factors lead the Court to conclude that the Defendants' use of the "VIGOURA" mark constitutes a clear case of passing off, undermining the distinctive character and reputation of the Plaintiff's "VIAGRA" trademark."

Subsequently, the court granted a permanent injunction against Renovision, restraining the company from promoting its homoeopathic medicine under the 'Vigoura' mark. Additionally, the court ordered Renovision to compensate Pfizer with Rs 3 lakh as nominal damages, marking a significant legal victory for Pfizer in safeguarding its trademark rights against unauthorized usage. It noted;

"The Defendants (Renovision) 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 Plaintiff shall be entitled to nominal damages to the tune of Rs. 3,00,000/-, recoverable jointly and severally from the Defendants."