Delhi High Court dismisses Sun Pharma's trademark infringement case against Hetero's breast cancer drug

The Delhi High Court recently rejected an appeal by Sun Pharma claiming that Hetero Healthcare's drug used for the treatment of advanced breast cancer had infringed its trademark. (Sun Pharmaceutical Laboratories Ltd v. Hetero Healthcare Ltd & Anr).The Commercial Court had held that it was apparent that the mark adopted by Sun was nothing but the first six letters of the ingredient, 'Letrozole', which is the international nonproprietary name (INN) of a salt.A Division Bench of Justices Vibhu Bakhru and Amit Mahajan upheld the Commercial Court's order and said,"The appellant, in the present case, cannot be allowed to monopolize the INN ‘LETROZOLE’. The mark, ‘LETROZ’, is not similar to the trademark ‘LETERO’ merely because both the parties have adopted the initial letters...".The Court also observed that there was merit in Hetero’s contention that Sun was not entitled to restrain the use of other marks on the basis of similarity with five letters of its trademark..The Court was hearing Sun's challenged to a Commercial Court order dated April 29, 2022 which had dismissed its application for a temporary injunction against Hetero.Sun alleged infringement of its trademark ‘LETROZ’, a generic drug for second line treatment of advanced breast cancer containing an active ingredient ‘LETROZOLE’. It claimed that it came across a similar drug (with LETROZOLE as the active pharmaceutical ingredient) being manufactured by Hetero under the mark ‘LETERO’.Sun claimed that due to the superior quality and high efficacy of its product, sales increased to ₹8.34 crores in the year 2016-17. It also claimed that it had incurred huge expenses towards the publicity of its product ‘LETROZ’, an acquired immense reputation and goodwill in the said trademark.Further, on account of registration, Sun argued that it had a statutory right to exclusively use the registered trademark ‘LETROZ’. Therefore, it sought an order restraining Hetero from using the trademark ‘LETERO’ as it is deceptively similar to its registered trademark ‘LETROZ’. The pharma giant also alleged that Hetero was passing off its goods..Hetero, on the other hand, contended that the word LETROZ is derived from the word ‘LETROZOLE’, which is an INN of a salt. Therefore, Sun cannot claim monopoly in use of the said word.The respondent company also argued that for the other drugs it manufactures, it has been using the mark by combining the last four letters of its name that is ‘TERO’ with other letters, making it a distinctive and coined mark.Further, it was pointed out that the said drug is not available without a prescription by a doctor. The drug is prescribed by an oncologist, who has specialised in the treatment of cancer and therefore, there is little possibility of confusion between the two drugs..With respect to the claim of passing off, the Court examined the packaging and the colour scheme of the two products and concluded, "It is apparent from the above that the colour scheme of the packaging and get up are not similar."Further, the Court also observed that 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 Sun Pharma's contention that a medical practitioner is likely to be confused because the initial three letters of the two marks – which are derived from the active pharmaceutical ingredient (API) used to make the drug - are the 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’," the Court observed in this regard..Finally, the Court reiterated the well-settled principle that an appellate court ought not interfere with the discretion of a trial court only 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 said.The appeal was thus dismissed..Advocates Sachin Gupta, Jaleen Kaur and Swati Meena appeared for Sun Pharma, while Advocates Ajay Sahni, Shrey Gupta and Aashish Arora represented Hetero Healthcare...[Read judgment] :