In the matter of :-
SUN PHARMACEUTICAL LABORATORIES LTD. ….. Appellant
Versus
HETERO HEALTHCARE LTD. & ANR. ….. Respondents
Date of Order:- 26.08.2022
APPEAL BEFORE DOUBLE BENCH OF HON’BLE DELHI HIGH COURT
The appellant, Sun Pharmaceutical Laboratories Ltd., filed the appeal against the order of Commercial Court. The Commercial Court had dismissed the Plaintiff’s(SUN) application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 in the suit CS DJ (Comm.) No.300/19.
The suit of infringment was filed by SUN alleging infringement of its trademark ‘LETROZ’ and passing off and seeking a decree of permanent injunction restraining the respondent (defendant) from using the trademark ‘LETERO’, in respect of the pharmaceutical product.
The relevant extract of the order by Commercial Court dated :-29.04.2022 is as under:-
“So, when we compare the trade mark of the plaintiff LETROZ and that of the defendant LETERO, it is clear that there is no deceptive similarity which can confuse the doctor or the chemist. 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 plaintiff is reflected as Rs.187.80/-, whereas the medicine of the defendant, costs Rs.60/- which is more than thrice of the defendant. Meaning thereby, the plaintiff intends to get enrichment at the cost of general public. The pronunciation of the trade mark i.e. LETERO and that of LETROZ is totally different. The names of both are also different. It is beyond understanding as to how the plaintiff can stop the defendant from using Ist two alphabets when he himself is using all the 6 alphabets LETERO of the generic name i.e LETEROZOLE. Hence, on the basis of the pleadings and also the documents placed on record by the parties, no prima-facie case is made out in favour of the plaintiff and against the defendants. The balance of convenience also does not lie in favour of the plaintiff and against the defendants. Hence, the application is dismissed.”
Appellant submitted that it manufactures a generic drug for second line treatment of advanced breast cancer containing an active ingredient ‘LETROZOLE’ under the trademark ‘LETROZ’. Appellant claims that it is doing so since 01.09.2001.
Appellant applied for registration of the trademark ‘LETROZ’ falling under Class 5 on 16.04.2001. The said application was objected/opposed by Novartis AG on the ground that ‘LETROZ’ is deceptively similar to the international non-proprietary name (INN) ‘LETROZOLE’. Appellant secured registration of the trademark ‘LETROZ’ on 14.10.2010 under Class 5.
Appellant submitted that in November 2017, it came across a similar drug (with LETROZOLE as the active pharmaceutical ingredient) being manufactured by Hetero Healthcare Ltd. under the mark ‘LETERO’.
It was not disputed by the parties that the drug being sold by SUN and HETERO is the same generic drug derived from the active ingredient ‘LETROZOLE’.
Respondent/Defendant’s line of defence
Respondent contended that the word LETROZ is derived from the word ‘LETROZOLE’, which is an international non-proprietary name (INN) of a salt; therefore, Appellant cannot claim monopoly in use of the said word. The word / mark LETROZ, is the first six letters of the said INN and its registration does not entitle Appellant to claim exclusive rights in respect of the word LETROZOLE or any part thereof.
Respondent submitted that it is common practice in the pharmaceutical industry to use trademarks derived from the active pharmaceutical ingredient (API). It further argued that the mark ‘LETERO’ is a registered trademark of HETERO and is coined by combining the first two letters of the salt ‘LETROZOLE’ with the last four letters of HETERO, that is, ‘TERO’.
It was further argued that the drug in question is for the treatment of advanced breast cancer and is a Schedule H drug. 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.
Respondent further submitted that even otherwise Appellant, being aware of the use of the mark by Respondent since the year 2007, is not entitled for any injunction in terms of Section 33 of the Trade Marks Act, 1999 having acquiesced for use of the mark by Respondent.
‘LETROZOLE’ the international non-proprietary name
The LETROZ mark adopted and registered by Appellant(SUN) is nothing but the first six letters of the said ‘LETROZOLE’ the international non-proprietary name (INN). Prima facie, there is merit in Respondent(HETERO)’s contention that Appellant is not entitled to restrain use of other marks on the basis of similarity with five letters of its trademark.
Court remarked that 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 (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’.
Appellant product was available at the price of ₹187.80/- and Respondent was selling it for ₹60/-.
Hon’ble Court observed that the packaging and the manner in which the trademarks of SUN and HETERO as depicted, are different.
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.
It is also important to note that the mark ‘LETERO’ is a registered trademark of Respondent(HETERO) and the drug under the said mark is being sold since the year 2007. Appellant(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.
Final Word of Double Bench of Delhi High Court
Hon’ble Court was 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.
Thus Appeal was dismissed.
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