Manufacturer Can't Claim Exclusivity Over Trade Mark When It Is Derived From Principal Ingredient Of Drug: Delhi HC Dismisses Sun Pharma's Appeal

The Delhi High Court recently rejected an appeal by Sun Pharma, claiming that Hetero Healthcare's drug used to treat advanced breast cancer had infringed its trademark.

A Division Bench of Justices Vibhu Bakhru and Amit Mahajan upheld the decision of the Commercial Court. It 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 non-proprietary name (INN) of a salt.

The appellant, Sun Pharmaceutical Laboratories Ltd., challenged an order by the Commercial Court dismissing its application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 and filed a suit, alleging infringement of its trademark 'LETROZ' and passing off and seeking a decree of permanent injunction restraining the respondent from using the brand 'LETERO,' in respect of the pharmaceutical product in question. It is claimed that since 2001 Sun has been using the trademark 'LETROZ' for a generic drug for second-line treatment of advanced breast cancer.

The Commercial Court has held that it is apparent that the mark adopted by SUN is nothing but the first six letters of the INN. Whether the trademarks are similar has to be considered bearing the aforesaid in mind. The Court relied on the case of Schering Corporation & Ors. v. Alkem Laboratories Ltd. and held that the appellant, in the present case, cannot be allowed to monopolize the INN 'LETROZOLE.' It noted,

"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 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 purchaser's mind. It applied the rationale in Panacea Biotec Ltd. v. Recon Ltd., where it was held that when the name is derived or coined from the word of the principal ingredient being used in the manufacture of the drug, no distinctiveness or exclusiveness can be claimed by the manufacturer.

The Court reiterated that in case of an action for passing off, the similarity between the competing marks is to be seen along with whether there is a likelihood of deception or confusion. The Supreme Court, in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., held that the products being sold by the parties would be purchased by both villagers and townsfolk, literate as well as illiterate, and the question has to be approached from the point of view of 'a man of average intelligence and imperfect recollection'. The Court held that the purchaser of goods in India could not be equated with the purchaser of goods in England. It was found that the drugs have a marked difference in their observations with entirely different side effects. Therefore, the test should be applied strictly as the possibility of harm resulting from any confusion by the consumer can have disastrous results.

In the instant case, the Court also held that the packaging and get-up color scheme was 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."

The Court also noted that the mark 'LETERO' is a registered trademark of HETERO, and the drug under the said mark has been sold since 2007. SUN has not filed any document or evidence to remotely suggest that any person has gotten confused because of the alleged deceptive similarity between the two marks.

It also noted 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. 

Case Title: Sun Pharmaceuticals Ltd v. Hetero Healthcare Ltd. & Anr.

Citation: 2022 LiveLaw (Del) 823

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