Delhi HC dismisses Sun Pharmas appeal against Hetero for infringement of its trade mark Letroz

New Delhi, September 1, 2022:

A division bench of the Delhi High Court has dismissed an appeal filed by Sun Pharmaceutical Laboratories against Hetero Healthcare related to an alleged infringement of its trade mark Letroz, a generic drug for second line treatment of advanced breast cancer.

Sun Pharma has a trademark Letroz for the drug, which contains an active ingredient letrozole, while Hetero sells the same generic drug under the brand Letero. Sun Pharma secured registration of the trade mark on October 14, 2010, despite an objection raised by Novartis AG that Letroz is deceptively similar to the international nonproprietary name (INN) letrozole.

Sun Pharma approached a 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 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. It is against this order Sun Pharma approached the division bench of Delhi High Court.

In an order on August 26, Justice VibhuBakhru and Justice AmitMahajan of the High Court of Delhi concluded that it is well-settled that an appellate court will not interfere with the discretion of the 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.

“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,” ordered the division bench.

The Court opined, “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’”.

In the present case, there is also a marked difference in the price of both the products being sold by Sun Pharma and Hetero Healthcare. Sun is selling its product at Rs. 187.80 and Hetero is selling it for Rs. 60, it added.

Further, the bench observed that the Commercial Court found that the trademarks in question were not similar. “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 added.

The packaging and the manner in which the trademarks of Sun and Hetero is distinctly different and it is apparent that the colour scheme of the packaging and get up are not similar.

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 added.

Sun Pharma argued that due to the superior quality and high efficacy of the product, its sales increased to Rs 8.34 crore in the year 2016-17 and it had incurred huge expenses towards the publicity of its product ‘Letroz’. It acquired immense reputation and goodwill in the said trademark and further claimed that on account of registration, it has a statutory right to exclusively use the registered trademark ‘Letroz’. And, it is entitled to an order restraining Hetero from using the trademark ‘Letero’ as it is deceptively similar to its registered trademark.

Hetero 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. Pharmabiz