Facts of the Case:
Sun Pharmaceutical Laboratories Ltd. (SUN) filed a suit against Hetero
Healthcare Ltd. (HETERO), alleging trademark infringement and passing off. SUN
claimed to be one of the largest generic medicine manufacturers and had
registered the trademark 'LETROZ' for its generic drug containing the active
ingredient 'LETROZOLE.' HETERO was manufacturing a similar drug under the
SUN sought a permanent injunction restraining HETERO from using the trademark 'LETERO,'
claiming it was deceptively similar to their registered trademark. The
Commercial Court dismissed SUN's application for an injunction, stating that
there was no deceptive similarity between the trademarks and the prices of the
medicines were significantly different.
Court and Bench:
The case was heard in the High Court of Delhi by Hon'ble Mr. Justice Vibhu
Bakhru and Hon'ble Mr. Justice Amit Mahajan.
The key issues in this case were:
- Whether SUN was entitled to a permanent injunction restraining HETERO
from using the trademark 'LETERO.'
- Whether HETERO's use of the trademark 'LETERO' infringed upon SUN's
registered trademark 'LETROZ' and amounted to passing off.
SUN argued that it had exclusive rights to the registered trademark 'LETROZ' and
that HETERO's use of the similar mark 'LETERO' constituted trademark
infringement and passing off. SUN claimed that it had acquired immense
reputation and goodwill in the trademark 'LETROZ' and that HETERO's actions were
causing confusion among consumers.
HETERO contended that the word 'LETROZ' was derived from the international
non-proprietary name (INN) 'LETROZOLE,' which is a common practice in the
pharmaceutical industry. HETERO argued that SUN could not claim a monopoly on
the use of the word 'LETROZ' and that their mark 'LETERO' was distinctively
different. They also claimed that SUN was aware of HETERO's use of the mark
since 2007 and had acquiesced to it.
The court referred to Section 13 of the Trade Marks Act, 1999, which states that
a word deceptively similar to an international non-proprietary name (INN)
declared by the World Health Organization cannot be registered as a trademark.
The court considered whether SUN's trademark 'LETROZ' was deceptively similar to
the INN 'LETROZOLE' and whether SUN's registration entitled them to exclusive
rights over the word 'LETROZ.'
The court analyzed the arguments presented by both parties and examined the
similarity between the trademarks 'LETROZ' and 'LETERO.' It considered the
phonetic, visual, and structural aspects of the marks and their potential to
cause confusion among consumers. The court also reviewed the pricing and
packaging of the medicines and the specialized nature of the drug, which
required a doctor's prescription. It examined precedents in similar cases and
assessed the balance of convenience.
The court concluded that SUN's trademark 'LETROZ' was merely the first six
letters of the international non-proprietary name 'LETROZOLE.' It found no
deceptive similarity between the trademarks and no likelihood of confusion among
consumers. The court also considered the difference in pricing and the
distinctiveness of HETERO's mark 'LETERO.' Consequently, the court dismissed
SUN's application for an injunction, stating that no prima facie case was made
out in favor of SUN.