Sun Pharmaceutical Laboratories Ltd v Hetero Healthcare Ltd. and Anr
Sun Pharmaceutical Laboratories Ltd. (Sun Pharma) has appealed the Delhi high court for impugning an order passed by the learned Commercial Court dated 29.04.2022
Earlier, Sun Pharma had filed the suit in Commercial court alleging infringement of its trademark ‘LETROZ’ and passing off and seeking a decree of permanent injunction restraining the Hetero Healthcare Ltd (Hetero), the defendant from using the trademark ‘LETERO’, in respect of the pharmaceutical product in question.
In the suit before Commercial Court, Sun Pharma stated that it was using the trademark ‘LETROZ’, for marketing ‘LETROZOLE’ (a breast cancer drug) after registering the mark in 2001. Sun Pharma secured the registration of the trademark even after the Application was opposed by Novartis on the ground that ‘LETROZ’ is deceptively similar to the international non-proprietary name (INN) ‘LETROZOLE’. Sun Pharma claimed that in 2017, it came across a similar drug being manufactured by Hetero under the mark ‘LETERO’.
Sun Pharma claimed that it had acquired immense reputation and goodwill in the said trademark ‘LETROZ’ and the goods sold thereunder and contended that since it has registered the trademark, Hetero should be restrained from using the mark ‘LETERO’ as it was deceptively similar and may lead to confusion.
Hetero defended that its mark was derived from the word ‘LETROZOLE’, international non-proprietary name (INN) of the compound. Hetero further stated that the mark ‘LETERO’ was coined by combining the first two letters of the compound and the last four letters of HETERO.
Hetero contended that Sun Pharma’s ‘LETROZ is derived from international non-proprietary name (INN) of a salt ‘LETROZOLE’, and Sun Pharma cannot claim monopoly in use of the said word. The mark LETROZ, being the first six letters of the said INN and its registration does not entitle Sun Pharma to claim exclusive rights in respect of the word.
Hetero further contended that the mark ‘LETROZ’ and the mark ‘LETERO’ are not phonetically similar so as to lead to any confusion in the mind of the consumers. Also the drug in question being a Schedule H drug, the drug has to be prescribed by an oncologist and therefore, there is little possibility of confusion.
The learned Commercial Court, after considering the rival submissions, held that when comparing both the trademarks there was no deceptive similarity which can confuse a doctor or a chemist. The court also compared the maximum retail price of both the products and concluded that Sun Pharma was selling the medicine at a cost thrice that of Hetero whereby it intends to get enrichment at the cost of general public. Further, the court held that the pronunciations of the two trademarks are totally different and also questioned how the plaintiff can stop the defendant from using first two alphabets when he himself is using all the 6 alphabets of the generic name ‘LETROZOLE’. The learned Commercial Court dismissed the application of Sun Pharma. Sun Pharma has filed an appeal in Delhi HC against this Decision
The High Court observed that Sun Pharma cannot be allowed to monopolize the Trademark as both the competing marks were taken from the initial letters of the INN Name. The High Court also noted that the MRP of the plaintiff medicine is thrice that of the defendant and the colour scheme of the packing and get up of both the products are different. The High court further observed that an oncologist is not likely to get confused because the two drugs are being sold with a mark containing the same first three letters.
The High Court held that there is no infringement of Trademarks when the trademark is derived from the name of the Active Pharmaceutical Ingredient and dismissed the appeal by Sun Pharma based on the above observations.