Passing Off claim rejected, Serum Institue’s ‘Covishield’ cannot be confused with hand sanitizers bearing the same name: Bombay High Court
Order of injunction in passing off cases ensures that no one should present his goods and services to the customers as of another party with goodwill in respect of the same and seek benefit therefrom. To grant an injunction both ingredients of injunction, i.e., prima facie case and balance of convenience should exist in favour of the applicant and these factors will be considered cumulatively and not as standalone grounds. This remarkable judgment was passed by the Bombay High Court in the matter of CUTIS BIOTECH V SERUM INSTITUTE OF INDIA PVT. LTD [APPEAL FROM ORDER NO. 53 OF 2021] by Honourable Justice Nitin Jamdar and Justice C. V. Bhadang. The subject matter of this Appeal is the trademark ‘Covishield’ which is the vaccination for covid 19. Both, the Appellant and the Respondent have applied for registering this trademark, and their applications are currently pending. The appellants have sought an interim injunction to restrain Serum Institute from using the trademark ‘Covishield’ and maintain the accounts regarding the sale, which was previously rejected by the District Judge of the Commercial Court. Hence, the appellants have appealed in the HC under section 13 of the Commercial Courts Act, 2015. The HC asserted that currently neither Appellants nor Respondents have a registration for the trademark ‘Covishield’ and Sub Section (1) of Section 27 of the Trade Marks Act, 1999 mandates that no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark. However, the appellants have based the present case on passing off since there is no registered trademark and relied on sub-section (2) that remedies to prevent passing off actions. Earlier, Cutis Biotech had filed an application for registration of trademark under Class-5 for veterinary, Ayurvedic, allopathic, medicinal, and pharmaceutical preparations and vitamins and dietary food supplements for humans and animals whereas SII applied for registration of a trademark for a vaccine under Class-5. The Ministry of Health and Family Welfare, Government of India, on 10 December 2020, published the COVID-19 vaccine procedure, which referred to the trademark of SII ‘Covishield’ and on 11 December 2020, Cutis Biotech filed a Trademark Suit and another application in the Trademark Registry for registration of trademark ‘Covishield’ in Class-5 for a vaccine for human use and others under the class. The District Court held that there was no dishonest deception since products and their visual appearance was different well as there are different trade channels. The Court also considered the implications of the grant of such injunction since the situation brought about by the pandemic required immediate attention and the importance of the vaccine for the general public is indispensable. The Court observed that “evidence produced by Cutis Biotech to demonstrate that it has been using the trademark ‘Covishield’ before the application of Serum Institute are not sufficient and do not have adequate details to establish a prima facie case whereas the respondents have adequate evidence to support their case.” Additionally, the HC stated that “If there is no probability of any deception, it would be a factor to decline injunction since confusion should arise in the minds of the customers of average intelligence and imperfect recollection.” In this case, confusion will not be caused since the buyer of the product, vaccine ‘Covishield’ is Government of India whereas the sale of disinfectant or hand sanitizer ‘Covishield’ might be related to the same field, that is, health care products, but cannot be said to cause confusion in the mind of average consumers. Also, the HC added that the vaccine ‘Covishield’ has been rolled out as an extensive vaccine administration program not only nationwide but also has been supplied to over seventy-two different countries. Thus, it is evident that the balance of convenience is not in favour of Cutis Biotech but SII.
 on 20 04 2021 on 21 04 skn 1 AO 53.2021.docIN THE HIGH COURT OF JUDICATURE AT BOMBAYCIVIL APPELLATE JURISDICTION APPEAL FROM ORDER NO. 53 OF 2021Cutis BiotechSole Proprietorship concernThrough its sole proprietor Archana Ashish Kabra Age 40 Occupation Business Address Shop No.1 Plot No.1City Survey No.10123 1st floor Opp. Datta Mandir Dayanand Nagar New Mondha Corner Nanded Maharashtra 411 602…Appellant Original Plaintiff.Versus Serum Institute of India Pvt. Ltd.Registered Address 212 2 off Soli Poonawalla Road Hadapsar Pune Maharashtra 411 028.Also at Sarosh Bhavan 16 B 1Dr. Ambedkar Road PuneMaharashtra 411 001Through its DirectorAdar Cyrus PoonawallaAge Adult Occupation: BusinessAddress 21 2 off Soli Poonawalla Road Hadapsar.…Respondent Original Defendant. on 20 04 2021 on 21 04 skn 2 AO 53.2021.docMr.Abhinav Chandrachud and Mr.Aditya Soni withChetan Alai Shriniwas Bade and Mr.Swaraj Jadhav i b.White & Brief Advocates & Solicitors for the Appellant.Dr.Birendra Saraf Senior Advocate with Mr.RohanSavant Mr.Hitesh Jain Ms.Pooja Tidke Ms.MonishaMane Bhangale and Ms.Warisha Parkar i b. Parinam LawAssociates for the Respondent.CORAM :NITIN JAMDAR ANDC. V. BHADANG JJ.DATE :20 April 2021.JUDGMENT :(Per Nitin Jamdar J.)The subject matter of this Appeal is the trademark‘Covishield’. Both the Appellant Cutis Biotech and theRespondent Serum Institute of India Pvt. Ltd. have applied forregistering this trademark and their applications are pending. CutisBiotech filed a suit against Serum Institute in the Commercial Courtat Pune. In this suit Cutis Biotech sought an interim injunction torestrain Serum Institute from using the trademark Covishield andmaintain the accounts regarding the sale. The learned DistrictJudge Commercial Court rejected the interim application. HenceCutis Biotech is before us with this Appeal under section 13 of theCommercial Courts Act 2015.2.We have heard Mr. Abhinav Chandrachud and Mr. Aditya on 20 04 2021 on 21 04 skn 3 AO 53.2021.docSoni learned Advocates for the Appellant Cutis Biotech and Dr.Birendra Saraf learned Senior Advocate for the Respondent SerumInstitute.3.Neither Cutis Biotech nor Serum Institute have aregistration for the trademark ‘Covishield’. Sub SectionofSection 27 of the Trade Marks Act 1999 mandates that no personshall be entitled to institute any proceeding to prevent or recoverdamages for the infringement of an unregistered trademark.However sub sectionthereof saves the right to take actionagainst any person for passing off his goods or services as the goodsand services of the applicant and preserves the remedies to preventpassing off actions. Since Cutis Biotech does not have a registeredtrademark it has based its case on the action of passing off.4.The learned counsel have placed reliance on variousprecedents as regards the principles to be employed for the grant ofan injunction to prevent Passing off. These are: Toyota JidoshaKabushiki Kaisha v. Prius Auto Industries Limited and Ors.1 NeonLaboratories Limited v. Medical Technologies Limited and Ors.2 Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products3 Laxmikant V. Patel v. Chetanbhai Shah and Anr.4 Corn ProductsRefining Co. v. Shangrila Food Products Ltd.5 Biochem1(2018) 2 SCC12(2016) 2 SCC 6723(2005) 3 SCC 634(2002) 3 SCC 655AIR 1960 SC 142:1 SCR 968 on 20 04 2021 on 21 04 skn 4 AO 53.2021.docPharmaceutical Industries and Ors. v. Biochem Synergy Limited6 Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujrat(India)7 Kaviraj Pandit Durga Dutt Sharma v. NavaratnaPharmaceutical Laboratories8 Indian Bank v. Maharashtra StateCooperative Marketing Federation Ltd.9 5.Basic principles from the above decision are as follows.Passing off is a tort in Common law to enforce rights regardingunregistered trademark. It is an action in equity. It is based on theprinciple that no one should use dishonest means to destroy hiscompetitor s business. The law of passing off is developed to preventunscrupulous persons from benefiting from the reputation andgoodwill earned by an honest business. Based on this principlerooted in equity the Courts initiate measures to prevent passing off.In such cases the order of injunction ensures that no one shouldpresent his goods and services to the customers as of another partywith goodwill in respect of the same and seek benefit therefrom. Toestablish passing off by the respondent the applicant must firstestablish goodwill and reputation attached to his goods and services.Second the applicant must show that the respondent s acts are likelyto lead the public to believe that the goods and services offered bythe respondent are goods and services of the applicant and third theapplicant is likely to suffer or has suffered damage. Under ourjurisprudence of passing off action these three principles are referred61997BomLR 538: 1998PTC 2671 SCR 737: AIR 1965 SC 9809(1998) 5 SCC 69 on 20 04 2021 on 21 04 skn 5 AO 53.2021.docto as the Classical Trinity. Further nuances of these three tests aredeveloped. To determine confusion the test is of a person of averageintelligence and imperfect recollection. Whether these ingredientsare established is to be determined in the facts of each case. Thecourts employ a higher standard of scrutiny regarding medicinalproducts because any confusion regarding these products may causeharm greater than the ordinary products. While examining thejudicial precedents the distinction between an act of infringement ofa registered trademark and passing off has to be remembered. Withthis prefix on the position of law we now turn to the facts anddiscussion.6.Cutis Biotech is the sole proprietorship of Archana AshishKabra. Cutis Biotech commenced its business of sellingpharmaceutical products in the year 2013 at Nanded Maharashtra.Serum Institute is a company incorporated under the CompaniesAct 1956 at Pune. It started its business in the year 1966 as aregistered partnership firm. Serum Institute manufacturers ofVaccines & immuno biologicals and has won various awards in thisfield. It supplies vaccines to various international organizations forthe immunization programme worldwide.7. Cutis Biotech on 29 April 2020 filed an ApplicationNo.4493681 for registration of trademark ‘COVISHIELD’(‘Covishield’) under Class 5. The mark as proposed was forveterinary Ayurvedic allopathic medicinal and pharmaceutical on 20 04 2021 on 21 04 skn 6 AO 53.2021.docpreparations and vitamins and dietary food supplements for humansand animals. This application is pending registration in theTrademark Office. On 6 June 2020 Serum Institute applied forregistration of trademark Covishield under ApplicationNo.4522244 for vaccine under Class 5. It had also applied for othervariants. 8.On 24 July 2020 Serum Institute applied to DrugsController General in Form CT 04 to conduct Phase II III clinicaltrial in India about a vaccine to be called ‘Covishield’. On 31 July2020 Serum Institute applied to DCGI in Form CT 10 tomanufacture the Covishield vaccine for clinical trial purposes. On2 August 2020 the Directorate General of Health Services Biological Division granted permission to Serum Institute tomanufacture test batches of ChAd0x1 nCoV 19 Coronavirus vaccine(Recombinant) for clinical trials. The Food and Drugs Authority on 8 August 2020 granted a license to Serum Institute forconducting the clinical trials. Food and Drugs Authority issuedfurther communication on 20 August 2020 granting provisionalpermission to the Serum Institute to manufacture additionalproducts for the Coronavirus vaccine subject to conditions. TheMinistry of Health and Family Welfare Government of India on 10December 2020 published the COVID 19 vaccine procedure which referred to the trademark of Serum Institute of ‘Covishield’ incollaboration with an agency named AstraZeneca for Phase II III on 20 04 2021 on 21 04 skn 7 AO 53.2021.docstage.9.On 11 December 2020 Cutis Biotech filed TrademarkSuit No.1 2020 in the District Court Nanded seeking to restrainSerum Institute from using the mark ‘Covishield’ invoking the law ofpassing off. On the next date on 12 December 2020 Cutis Biotechfiled another application in the Trademark Registry for registrationof trademark ‘Covishield” in Class 5 for a vaccine for human use andothers under the class. 10.Serum Institute filed its appearance in the suit filed atNanded. It moved an application under Order 7 Rule 11(d) of theCode of Civil Procedure 1908 seeking rejection of the plaint on theground that the suit was not maintainable under section 134(2) ofthe Trademark Act 1999 and the suit ought to have been filedunder the Commercial Courts Act 2015. The application was heard but no orders were passed by the Court11.On 4 January 2021 Cutis Biotech filed the presentCommercial Suit No.1 2021 in the District Courtat Pune along with an application for a temporary injunction.On 20 January 2021 Cutis Biotech applied for withdrawal of the suitfiled at Nanded. Serum Institute filed its reply to the applicationand contested the same. 12.The District Judge Pune heard the injunction application. on 20 04 2021 on 21 04 skn 8 AO 53.2021.docThe District Judge noted that both Cutis Biotech and SerumInstitute do not have registration for the trademark ‘Covishield’.Thus the grievance of Cutis Biotech would be termed as anallegation of passing off by Serum Institute. The District Courtconsidered the law on the subject and the tests required for grant ofinjunction in case of passing off. The District Court held that CutisBiotech had earned no goodwill in a short time. There was nodishonest deception by Serum Institute for passing off or to divertthe business of Cutis Biotech. The products of Cutis Biotech andSerum Institute were different. The trade channels were different.There was no evidence of any confusion caused in the mind of theconsumers. The products of Cutis Biotech and Serum Institute wereused for different purposes and visual appearance of the productswas different. The District Court also considered the implications ofthe grant of such injunction. The Court noted the situation broughtabout by the pandemic and the importance of the vaccine for thegeneral public. The District Court by the impugned order dated 30January 2021 rejected the Interim Application. Being aggrieved Cutis Biotech has filed this appeal under section 13 of the Act of2015.13.To grant an injunction in cases of passing off bothingredient of injunction i.e. prima facie case and balance ofconvenience should exist in favour of the applicant. The court hasto be satisfied that there are serious questions to be tried at the suit on 20 04 2021 on 21 04 skn 9 AO 53.2021.docirreparable damage will be caused to the applicant and the hardshipwould be more to the applicant and therefore an interim injunctionis necessary. The applicant has to make out a strong case that theRespondent s action would materially injure its business and thedanger is imminent. In certain cases that grant of or refusal of theinjunction will adversely affect the general public interest also arelevant factor. 14.For consideration of prima facie case and determining thebalance of convenience the relevant factors will have to beconsidered cumulatively. Cutis Biotech has sought to criticize theorder passed by the District Court by dealing with one groundseparately as if it is a standalone ground. But as rightly pointed outby Serum Institute all the factors will have to be taken cumulatively.15.The foundation of passing off action is the existence ofgoodwill. Further as to who conceived and adopted the mark earlieris also relevant. Cutis Biotech has pleaded its case of goodwill andprior use in the plaint and the interim application. As pleaded thecase of Cutis Biotech on its goodwill and prior use is as follows.Cutis Biotech is selling pharmaceutical products and it commencedits business in the year 2013. On 25 April 2020 Cutis Biotechcoined the word ‘Covishield’ and decided to use it in respect ofpharmaceutical and other related products. Having found no suchregistered trademark Cutis Biotech applied for registration of thistrademark on 29 April 2020 regarding veterinary ayurvedic on 20 04 2021 on 21 04 skn 10 AO 53.2021.docallopathic medicinal and pharmaceutical preparation and vitaminsand dietary food supplements for humans and animals in Class 5.From 30 May 2020 Cutis Biotech received products like antisepticand disinfectant liquid sanitizes bearing brand ‘Covishield’ from itsmanufacturers. Cutis Biotech sold products in various states inIndia. The trading community and average consumers purchase itsproducts and they are popularized through advertising. Thetrademark ‘Covishield’ has become a distinct product and business ofCutis Biotech. From 30 May 2020 to 31 December 2020 for sevenmonths the turnover of Cutis Biotech was Rs.1600152 and it spentRs.122500 towards advertising the products.16.We have considered the pleadings of Cutis Biotechregarding the prior user. The averment in the plaint that from 30May 2020 Cutis Biotech received the products bearing the brand‘Covishield’ from its manufacturers is not substantiated. Noparticulars are enumerated. Details are necessary since it is afoundation of the case of Cutis Biotech that it is a prior user and hasacquired goodwill. Some invoices under Goods and Service Tax asof 30 May 2020 are placed on record. One bears reference to M s.Samrvir Biotech Private Limited in Himachal Pradesh. This invoicerefers to six products. Out of that five are Forest Herbs handsanitisers and there is one entry of Covishield but it has noparticulars. Some GST invoices post September 2020 are on record.These invoices are prepared by Cutis Biotech itself with the only on 20 04 2021 on 21 04 skn 11 AO 53.2021.docreference to the names such as Shri Varu Pharmaceuticals GauravMedicals. Some invoices have no names. One document placed onrecord is a certificate of provisional registration. There is adocument regarding the change of premises and a tax audit report bya Chartered Accountant. This is the evidence that Cutis Biotechhas produced on record to demonstrate that it has used thetrademark ‘Covishield’ before the application of Serum Institute on 6June 2020. We do not find adequate details to establish a prima faciecase. 17.On the other hand a detailed reply is filed by SerumInstitute placing on record the prior user and adoption of the markby the Serum Institute and how the claim of Cutis Biotech that it isthe prior user is erroneous. It is the case of Serum Institute that itcoined the mark ‘Covishield’ in March 2020 itself. For that purpose an inter office communication between the Purchase Department toobtain packaging material for the Covishield vaccine is on record.Samples of packaging material regarding ‘Covishield’ being deliveredto one Anup Printers on 25 May 2020. Further inter officecommunication of 26 March 2020 to the Purchase Department ofthe Serum Institute to procure packaging material under trademark Covishield is on record where there is an endorsement of one AnupPrinters dated 27 March 2020. Serum Institute had issued astatement in March 2020 they are investing around USD 100million on the COVID 19 vaccine. Another statement was issued in on 20 04 2021 on 21 04 skn 12 AO 53.2021.docApril 2020 that Serum Institute plans to produce a Coronavirusvaccine in collaboration with Astra Zeneca. The trial of the OxfordCoronavirus vaccine commenced around 23 April 2020. TheUnion Health Minister further made a statement on 25 April 2020in respect trial of Serum Institute. On 3 May 2020 Serum Institutereceived virus seed and cell bank from Oxford University andpermission was granted by DCGI. Therefore on 6 June 2020 when Serum Institute applied for registration of ‘Covishield’ it waswidely known in the media. The response of Cutis Biotech to thesedocuments of Serum Institute is that they are fabricated. It is notpossible to accept such a simplistic contention as further narrationwould show that none of the documents are in isolation.18.Not only there is adequate evidence to show prioradoption and user but Serum Institute has also continued its userwithout a break. It is placed on record that Serum Institute hasproduced 60 million doses of the Covishield vaccine per month andhas supplied 48 million doses to the Government of India. SerumInstitute has obtained various permissions and licenses required tomanufacture the vaccine under the trademark ‘Covishield’. Thedetails of the permissions obtained and procedure followed are givenin the say filed by Serum Institute. These are as follows: Thecompliance with the procedure required to manufacture the vaccinewith the trademark Covishield includes observance of Drugs &Cosmetics Act 1940 Rules 1945 and New Drugs and Clinical TrialRules 2019. The approval of layout plans of manufacturing the on 20 04 2021 on 21 04 skn 13 AO 53.2021.docjoint inspection of premises by teams of Experts & Drugs Inspector.The establishment of premises complying with GMP GLPrequirements laid down in Schedule M & Schedule L I of Drugs andCosmetics Rules. Engaging a qualified technical staff for themanufacture and quality control of the vaccines. The preparation ofmaster formula. The framing of the Standard Operation Procedures.The manufacture of batches as per detailed Batch ManufacturingProtocol under the supervision of competent technical staff. Thesubmission of samples of each batch of the vaccine produced alongwith the standards to be submitted to the National ControlLaboratory for testing and certification of each batch and distributingbatch either directly in the market or through Government Healthauthorities to end users. It is stated that various mandatory clinicalstages for the development of Covishield have been undertaken todevelop the Covishield vaccine which includes pre clinicalstudies the compilation of pre clinical data and applicationfor Phase I Clinical Trial on human subjects. Further Clinical TrialPhase I on 20 hundred healthy volunteers to check the safety ofvaccine complying with several regulatory steps procedures is carriedout. The Clinical Trial Phase II is carried out on almost fivehundred healthy volunteers to check expanded safety and efficacy ofvaccine complying with several regulatory steps procedures. TheClinical Trial Phase III on more than one thousand volunteers isdone to confirm safety and efficacy of vaccine and submission of thehuge data so generated compiled and its review by SEC DCGI and on 20 04 2021 on 21 04 skn 14 AO 53.2021.docapproval. These events form a chain of seamless activity for thedevelopment of the vaccine using the mark. It is thus cleartherefore right from March 2020 Serum Institute has been takingsteps in furtherance of the mark ‘Covishield’. Apart from the inter departmental correspondence the factum of Serum Institutedeveloping a vaccine being in the media is not being denied. Afterevaluating the evidence on record we find that Serum Institute hadcoined the word Covishield and took substantial steps towards itsdevelopment and manufacture. Thus there is adequate andconvincing material on record to demonstrate the prior adoption ofthe mark by Serum Institute. There is no perversity in the findingthat Cutis Biotech cannot claim to be a prior user of Covishield .19. To establish goodwill Cutis Biotech has claimed thatfrom 30 May 2020 to 31 December 2020 its turnover was of Rs.16lakh and it spent Rs.1.2 lakh towards advertisements. If spread overfor seven months this amount would come around less than rupeestwo 2 lakh a month. To lay the foundation for the acquisition ofgoodwill the turnover need not be enormous. If the applicant is asmall businessman it cannot be said that he has not earned goodwillbecause there is no substantial turnover. But as rightly contended bySerum Institute that considering Cutis Biotech sold hand sanitisersand disinfectants which products had high demand during thepandemic the turnover of Rs.16 lakh for seven months is notsignificant. In the case at hand if the aspect of turnover is takencumulatively with other factors it becomes relevant. This small on 20 04 2021 on 21 04 skn 15 AO 53.2021.docamount of turnover has to be seen with the claim of Cutis Biotech ofbeing a prior user. As held earlier the evidence placed on recordshows no prior user and the adoption of the mark. According to us there is no sufficient material on record to hold that Cutis Biotechhas established sufficient goodwill regarding trademark ‘Covishield’.From this evidence produced on record the failure of Cutis Biotechto substantiate its assertion that it was a prior user of the mark andhad acquired goodwill is more than clear. There is no perversity inthe finding of the District Court that Cutis Biotech has notestablished this test for granting an injunction.20.The next aspect is the likelihood of deception andwhether the products of Cutis Biotech and Serum Institute are in thecommon field. This is relevant in the context of misrepresentationand confusion in the mind of the customers. If there is noprobability of any deception it would be a factor to declineinjunction. Confusion should arise in the minds of the customers ofaverage intelligence and imperfect recollection. Actual confusion isnot required to be established and a likelihood of confusion isenough to establish the ingredients of passing off. To decide whetherthe respondent s action is likely to deceive or cause confusion leadingto passing off would have to depend on the particular facts of thecase. A common sense approach will have to be adopted to find outwhether Serum Institute’s conduct is calculated to pass off its goodsas that of the Cutis Biotech’s or at least create confusion in the mind on 20 04 2021 on 21 04 skn 16 AO 53.2021.docof the customers leading to the Serum Institute benefiting at theexpense of the Cutis Biotech. 21.The District Court has held that the consumers of CutisBiotech and Serum Institute are different and the trade channels arealso different. According to Cutis Biotech this finding is incorrectas the trade connection between the products medicinal products ofthe parties is sufficient for confusion to arise and even if tradechannels are different so long as the marks are deceptively similar case of passing off is made out. It is contended that actualconfusion does not have to be proved when at the interim stageinjunction is sought. First it has to be remembered that theingredients required to establish an action of passing off are to betaken cumulatively and in the totality of the circumstances. Second the issue of confusion in the mind of the average consumers willhave to be considered in the light of finding that Cutis Biotech hasnot established that it is a prior user or had acquired goodwill.22.We do not agree with the contention of Cutis Biotech thatthere is a likelihood of confusion between the products of CutisBiotech and Serum Institute. The vaccine ‘Covishield’ producedby Serum Institute is not available across the counter. The vaccinewill be administered through Government agencies. The buyer ofthe product Covishield of Serum Institute is the Government ofIndia. The administration of the vaccine is through an injection.The sale of disinfectant or hand sanitiser though it may relate to the on 20 04 2021 on 21 04 skn 17 AO 53.2021.docsame field that is health care products cannot be said to causeconfusion in the mind of average consumers. The administration ofvaccine through an injection is well known. It will be too farfetchedto hold that there will be confusion in the average consumers mindsbetween the use of a trademark in a Government administeredvaccine at designated places and over the counter sanitiser products.Visually also the products are different. The District Court wascorrect in holding that there will be no deception or likelihood ofconfusion in the products of Cutis Biotech and that of SerumInstitute. 23.In fact the argument of Cutis Biotech before us isconverse that the people may buy its products of thinking they areprotected against corona virus because of the use of mark‘Covishield’. This would mean according to Cutis Biotech confusion would result in people to buy its products. This argumentis the opposite of the concept passing off. If such purchases do takeplace it will be because of the goodwill generated by Serum Instituteregarding its mark ‘Covishield’. To substantiate passing off by SerumInstitute Cutis Biotech has to show that Serum Institute is passingoff its goods as that of Cutis Biotech based on the goodwill of CutisBiotech. The argument advanced by Cutis Biotech is therefore self destructive.24.Cutis Biotech then sought to contend that because SerumInstitute is using the mark ‘Covishield’ for its vaccine the suppliers on 20 04 2021 on 21 04 skn 18 AO 53.2021.docof Cutis Biotech have stopped supplying goods to Cutis Biotechwhich is not only causing damage to the business of Cutis Biotechbut would also impair its growth. Reliance is placed on the decisionof the learned Single Judge of Delhi High Court in the case of ElloraIndustries v. Banarasi Das Goela and others10.To uphold such aground a factual foundation must exist for this assertion. For that we turn to the pleadings in the interim application and the plaint.This case of future damage and loss of growth is founded on oneassertion that on 7 December 2020 one of the trade partners ofCutis Biotech refused to supply the order dated 15 August 2020 ofmanufacturing multivitamin injection citing the confusion that mayarise. This email refers to an email sent on 15 August 2020 by oneGeeta Jain and the reply is given on 7 December 2020 saying that itis not possible to supply the goods because people might feel that theinjection is a duplicate. The mails have been exchanged with a gapof almost six months. The authenticity of this single exchange ofmails is doubtful.25.Firstly the case of Cutis Biotech of future damage is notsubstantiated in fact. Second since the Serum Institute is the prioruser of the mark and has acquired goodwill and because of thatconsumers are not consciously purchasing the goods of CutisBiotech it cannot be considered as a case of passing off by SerumInstitute. The decision in the case of Ellora Industries on whichreliance is placed arose from different facts and circumstances. In10ILRII Delhi 481 on 20 04 2021 on 21 04 skn 19 AO 53.2021.docthe said decision the learned Single Judge of Delhi High Courtemphasized the need to establish goodwill as a foundation for basingthe claim of passing off. Without goodwill and the prior usershown in the first place the loss of future sale or potential injurycannot be a standalone factor in this case assuming it is a factoravailable in law.26.Cutis Biotech applied for registration on 29 April 2020regarding Class 5 and the products were sanitiser liquid antiseptic disinfectant etc. After the Ministry of Health published theCOVID 19 procedure on 10 December 2020 referring ‘Covishield’vaccine of Serum Institute another trademark application was filedby Cutis Biotech on 12 December 2020 for registration oftrademark ‘Covishield’ in Class 5 for vaccines. Thus realizing that asuit filed on 11 December 2020 for passing off with no applicationfor vaccine registration Cutis Biotech applied for registration.According to us the conduct of Cutis Biotech does not appear to bebonafide. This factor also will have to be considered whileconsidering its claim for an injunction.27.As regards the other ancillary arguments of Cutis Biotechthat Serum Institute was aware of the application of Cutis Biotechand had applied that for different variants of the mark and havestated to the contrary are concerned they are not of muchsignificance as the foundation of passing off action i.e. prior use andacquisition of goodwill have not been established by Cutis Biotech. on 20 04 2021 on 21 04 skn 20 AO 53.2021.docOn the other hand Serum Institute has claimed these ingredients yet Serum Institute has not moved any cause for restraining CutisBiotech for passing off action.28. Since there is no prima facie case in favour of CutisBiotech its prayer to direct the Serum Institute to maintain accountscannot be granted. A direction to maintain accounts is not aroutine order and cannot be issued when there is no prima facie casemade out by Cutis Biotech.29.Serum Institute through its written submission hasplaced certain facts which are not disputed. After the present suitwas filed on 4 January 2021 the vaccine Covishield of SerumInstitute has started being administrated from 16 January 2021. TheGovernment of India has rolled out an extensive vaccineadministration programme. The Government of India identifiedalmost 300 million people for the vaccine in the first round and thefirst order for 11 million doses for the Covishield vaccine has beenplaced. The second dose would be administered after the stipulatedweeks. On 1 March 2021 a vaccination drive for those above theage of sixty and the age of forty five years with comorbidities hasbeen launched. ‘Covishield’ vaccine of Serum Institute has beensupplied through the States and Union Territories. As of 16 March2021 sixty six million doses of Covishield have been supplied tothe Government of India. Also around fifty nine million doses havebeen supplied to over seventy two different countries. The on 20 04 2021 on 21 04 skn 21 AO 53.2021.docGovernment of India has placed a further purchase order for tencrore doses of ‘Covishield’ of Serum Institute. Serum Institute has to date made a sale amounting to Rs.37507 lakhs through the sale ofthe Covishield vaccine. The Serum Institute has also placed onrecord that it has spent Rs.28 crore on the development research andis expected to spend a further Rs.20 crore. With these facts thebalance of convenience is not in favour of Cutis Biotech. Grant ofinjunction against Serum Institute would have a serious impact on itsbusiness. 30.There is one more facet to be considered to determine thebalance of convenience. That Covishield is a vaccine to counterCoronavirus is now widely known. A temporary injunction directingSerum Institute to discontinue the use of mark Covishield for itsvaccine will cause confusion and disruption in the Vaccineadministration programme of the State. In this case thus the grantof an injunction would have large scale ramifications traversingbeyond the parties to the suit.31.The scope of an appeal against the discretionary order isnow well established. The appellate court will not interfere with theexercise of discretion of the trial court and substitute it unless thediscretion of the trial court is arbitrary or perverse or where the trialcourt has passed an order contrary to the settled principles of lawgoverning injunctions. The appellate court will not generallyinterfere if the conclusion arrived at by the trial court is reasonably on 20 04 2021 on 21 04 skn 22 AO 53.2021.docpossible. Merely because if it considered the matter at the trial stage it would have come to a contrary conclusion is not a ground for theappellate court to interfere11. A total deference to the discretion bythe trial court is not expected from the appellate court if the order isarbitrary or perverse. But as our above discussion would showthat the discretion used by the learned District Judge in refusing togrant an injunction is not arbitrary or perverse. Even if the evidencewas to be looked at in the first instance no case is made out for grantof any relief.32.The Appeal is dismissed. SCC 727 