Sun Pharma vs. Hetero Healthcare

28th April, 2023 - 6:19 am Categories: Legal Issues Trademark 0 Comments

Introduction

Under Class 5 of the Trade Marks Act, 1999, Sun Pharma has registered the mark “LETROZ,” which refers to a medication used to treat advanced breast cancer. “LETROZOLE” is one of its active ingredients. Sun Pharma sued Hetero Healthcare Ltd. for using the mark “LETERO” on the basis of trademark infringement and passing off. Sun Pharma’s interim plea for an injunction was denied by the single judge, who also ruled that both marks were derived from a generic name. Hence, there is no basis for granting an injunction.

Aggrieved by the order dated April 29, 2022, dismissing the interim injunction application, Sun Pharma filed an appeal before the High Court against the Impugned Order. The Appeal was heard by the division bench of Justice Vibhu Bhakru and Justice Amit Mahajan.

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• It is one of the biggest pharmaceutical firms in the world that produces generic medications. Since 2001, LETROZ has been a manufactured good. Due to trademark registration, it has a legal right to the sole use of LETROZ and is therefore eligible for an injunction.
• Sun Pharma relied on rulings in Automatic Electric Limited v. R.K. Dhawan and Ajanta Pharma Limited v. Sunways (India) Pvt. Ltd. to assert that generic marks are also capable of being protected through injunctive relief. Hetero is using LETERO since 2017 to pass off their goods as those of Sun Pharma and is attempting to ride upon the goodwill and reputation earned by Sun Pharma.

Hetero’s submissions

• Hetero argued that Sun Pharma does not possess exclusive rights to “LETROZOLE,” which is an INN of a salt, and that Sun Pharma cannot assert monopoly because both Hetero and Sun Pharma’s trademarks were derived from this substance. Sun Pharma is also aware that Hetero has been using the mark. It has consented to it in accordance with Section 33 of the TM Act.
• LETERO, a registered brand of Hetero, was created by fusing the last four letters of Hetero with the first two letters of the salt LETROZOLE. It owns several trademarks that combine the final four letters of Hetero.
• According to the list of INN published by the Office of the Controller General of Patents, Designs, and Trade Marks, Ministry of Commerce and Industry, Government of India, LETROZOLE is an INN and cannot be registered. Hetero relied on this list. No word that has been designated as an INN by the World Health Organization and notified in a required manner by the Registrar of Trademarks may be registered as a trademark, according to Section 13 of the TM Act.

Decision

The HC heavily relied on its ruling in the matter of Schering Corporation v. Alkem Laboratories Ltd. while basing its decision (but not exclusively) on the fact that the medications were Schedule H substances. In the Schering case, the HC took into account the fact that drugs were highly specialised, used for a specific purpose, and could only be sold with a prescription from a cancer specialist as some of the important factors in holding that defendant’s marks “TEMOKEM” and “TEMOGET” are not deceptively similar to that of plaintiff’s marks “TEMODAL” and “TEMODAR.” It also noted the significant price disparity between the two medications.

The Supreme Court’s ruling in the DWD Pharmaceuticals case demonstrates the importance of the public interest. The plaintiff in this case requested an injunction against the defendant, claiming that the latter’s mark “FOLZEST” is confusingly similar to its mark “FORZEST.” Although the High Court fined the plaintiff Rs. 10 lakhs for withholding important information, it refused to overturn the lower court’s ad-interim injunction in favour of the plaintiff due to the low threshold of uncertainty in pharmaceutical items and the predominance of public interest.

The HC declined to overturn the lower court’s decision, upholding the respondent’s arguments. It was observed that the two medications are identical generic medications used to treat serious illnesses like breast cancer. The HC noted that the in question drugs are highly specialised Schedule H drugs that can only be given upon a prescription by an oncologist who, being specialised in the said area, is unlikely to get confused due to similarity of the initial three letters in reaching its conclusion that the respondent’s mark is not phonetically or visually similar to the plaintiff’s mark as likely to cause confusion. The HC also emphasised the obvious pricing disparities and distinctive packaging between the two products. Further, no evidence of actual confusion was advanced by the appellant in support of its contention.

Conclusion

In the Hetero Healthcare Ltd. case, the HC appears to be biased by the desire to make medications more affordable. Unfortunately, trademark law does not provide a basis for such a goal. The current case would have required a grant of an ad-interim injunction if the court had used a strict criterion and looked at it from the perspective of the public interest. The adoption of the “expert” viewpoint as the standard and the departure from the long-established methodology for determining the possibility of confusion merely causes uncertainty, upsetting the previously established position. More of these lawsuits are anticipated to end up in court because pharmaceutical corporations frequently base their brand names on “the prime ingredient or the principal component.” It is hoped that the Apex Court will clear the cloud when the said issue comes up before it either in appeal or in a case where it appropriately arises.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• Dheeraj Nair, Shruti Dass & Utkarsh Gupta, Exclusive use of a trademark derived from a generic name of the drug is not permissible Lexology (2022), https://www.lexology.com/library/detail.aspx?g=805817ef-6366-4269-9041-896a960c188e (last visited Mar 31, 2023).