Setback: HC rejects Sun Pharma plea against Hetero alleging trademark infringement of cancer drug Letroz
New Delhi: Holding that when the name is derived or coined from the name of the principal ingredient being used in the manufacture of the drug, no distinctiveness or exclusiveness can be claimed by the manufacturer, the Delhi High Court has rejected an appeal by drug major Sun Pharma against Hetero Healthcare alleging infringement of its trade mark Letroz, a generic drug for second line treatment of advanced breast cancer.
A division bench of Justices Vibhu Bakhru and Amit Mahajan upheld the decision of the Commercial Court that noted that it was apparent that the mark adopted by Sun Pharma was nothing but the first six letters of the ingredient, 'Letrozole', which is the international non-proprietary name (INN) of a salt.
The case concerns Sun Pharma's trademark Letroz for the drug, which contains an active ingredient letrozole. Sun secured registration of the trade mark on October 14, 2010, under class 5 despite an objection raised by Novartis AG that Letroz is deceptively similar to the International Nonproprietary Name (INN) letrozole.
Essentially, International Nonproprietary Names (INN) facilitate the identification of pharmaceutical substances or active pharmaceutical ingredients. Each INN is a unique name that is globally recognized and is public property.
Earlier this year, in April, Sun Pharma had filed a suit against Hetero Healthcare before commercial court claiming that it has come across in November, 2017 that Hetero Healthcare is manufacturing a similar drug under the mark Letero.
However, the the Commercial Court dismissed the application observing that there is no deceptive similarity which can confuse the doctor or chemist and there is a huge price difference between the two drugs.
Challenging the commercial court order, the pharma firm moved Delhi High Court and filed a suit, alleging infringement of its trademark 'LETROZ' and passing off and seeking a decree of permanent injunction restraining Hetero.
Sun Pharma claimed that due to the superior quality and high efficacy of the product, its sales increased to Rs 8.34 crores in the year 2016-17. It also claims that it had incurred huge expenses towards the publicity of its product 'LETROZ'. It acquired immense reputation and goodwill in the said trademark and the goods sold thereunder. The drug maker further claimed that due to the trademark registration, it has a statutory right to exclusively use 'Letroz' and is entitled to restrain Hetero from using its trademark.
Meanwhile, Hetero contended that it is common practice in the pharmaceutical industry to use trademarks derived from the active pharmaceutical ingredient (API). It argued that the word Letroz is derived from the word 'Letrozole', which is an international non-proprietary name (INN) of a salt; therefore, Sun Pharma cannot claim monopoly in use of the said word.
After examining the case, the High Court concurred with the view of the Commercial Court that prima facie, there is little possibility of confusion or deception in the drug's buyer's mind.
"We concur with the prima facie view of the learned Commercial Court. Prima facie, there is little possibility of confusion or deception in the mind of the purchaser of the drug," it noted.
However, the Court further observed that the packaging and get-up color scheme were not similar. Thus, it noted, "In a case, where a drug necessarily has to be prescribed by a registered medical practitioner, especially, for the treatment of an ailment as serious as breast cancer, it is difficult to accept that the said medical practitioner is likely to be confused because the initial three letters of the marks – which are derived from the API – are same."
"An oncologist, who is an expert and who prescribes the medicines for the treatment of breast cancer, in our opinion, is not likely to get confused because the two drugs are being sold with a mark containing the same first three letters, that are, 'Let' when the same are admittedly derived from the INN 'Letrozole'; more so, when the same drug is being sold by not only the parties herein but also by many other companies, a majority of which selling the said drug contain the same first three letters 'Let'," it added.
"It is also important to note that the mark 'LETERO' is a registered trademark of HETERO and the drug under the said mark is being sold since the year 2007. SUN has not filed any document or evidence to remotely suggest that any person has got confused because of the alleged deceptive similarity between the two marks," it further added.
"The mark, 'LETROZ', is not similar to the trademark 'LETERO' merely because both the parties have adopted the initial letters (SUN adopted the first six and HETERO adopted the first three) of the INN 'LETROZOLE'. It is apparent that both SUN and HETERO are using their marks, which are derived from the INN 'LETROZOLE', which is descriptive of the active ingredient of the drug, that is, 'LETROZOLE'," the court opined.
The court also noted that the prices of Sun's and Hetero's products vary considerably. Sun charges Rs 187.80 for its product, while Hetero is priced at Rs 60. It noted;
"Admittedly, there is huge difference in the prices of the medicines. The composition are totally similar as reflected clearly on the boxes. However, the maximum retail price over the medicine of the Hetero is reflected as Rs.187.80/-, whereas the medicine of the Sun Pharma, costs Rs.60/- which is more than thrice of the Sun Pharma. Meaning thereby, the Hetero intends to get enrichment at the cost of general public."
Furthermore, it mentioned that an appellate court would not interfere with the trial court's discretion because a different view is possible. "As long as the view taken by the court below is a reasonable one, no interference is warranted," the Court added.
Subsequently, the court dismissed Sun Pharma's plea noting that the mark 'LETROZ' is nothing but a short name of the active ingredient 'LETROZOLE'. It noted, "This Court is unable to accept that the learned Commercial Court has exercised its discretion arbitrarily or has ignored the settled principles of law relating to grant of refusal of interlocutory injunction. In view of the above, the appeal is dismissed. The pending applications are also disposed of."
To view the full order, click on the link below:-
