Pharmaceutical companies battle over who owns the Sun. SUN PHARMA v. SUN BIOPHARMA

Pharmaceutical companies battle over who owns the Sun. SUN PHARMA v. SUN BIOPHARMA

Traditionally a trademark is thought of as a word, phrase or symbol a company uses to brand its products.  A trademark is a something which signals to consumers the identity of the producer of a product.   United States trademark law grants the first user of a trademark, often called the senior user, the exclusive right to brand goods with a trademark.  If a second user begins branding products with a similar trademark to brand goods, the second user would be considered the junior user.  If the junior users brands products with a trademark in a way that leads to consumer confusion about the source of a product that can be considered trademark infringement.  The senior user can address trademark infringement by filing a lawsuit to stop infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

Trademark law in the United States is complicated because it is governed by federal statutes, state statutes and common law principals.  In the United States a trademark can be registered to strengthen the rights associated with a trademark, but registration is not necessary to begin using the trademark to brand products. A point of confusion for some people is that registration of a trademark does not guarantee that the owner of the registration owns the trademark.  If another party can demonstrate that they were using the trademark before the registrant then that party would not be liable for trademark infringement in some circumstances.

When a trademark is registered by a junior user, a senior user of a trademark may still have superior rights.  Because United States trademark law is based on common law,  trademark rights within a certain territory are based on priority of use of a mark within that territory.  In that case it is possible for senior user to exclude a junior user from a territory, even when the junior user registers the trademark with the United States Patent and Trademark Office.

The general rule for trademark ownership in the United States is that ownership of a trademark goes to the first-to-use, not the first-to-file.  While registering a trademark grants the registrant significant benefits, trademark priority is more important than trademark registration.

SUN PHARMACEUTICAL INDUSTRIES LTD v. SUN BIOPHARMA INC., 19-cv-03108 (D.MN 2019) is a case where it is difficult to identify who actually has priority over a trademark.  The plaintiff in this case is a company based in India that manufacturers generic pharmaceuticals.  The plaintiff began using the trademark SUN PHARMA in 1993 and has registered the trademark under registration numbers:  5,410,731 (2018), 5,294,936 (2017), 5,294,924 (2017), and 4,706,976 (2015).  The plaintiff has operated a subsidiary in  New Jersey since 1997.  The intended customers of the plaintiff are consumers, medical professionals and pharmaceutical wholesalers.

The defendant in this case, SUN BIOPHARMA, is an American company that develops specialized medicines and performs clinical trials.  The defendant was founded in 2011 and operate in Minnesota.  The defendant’s primary product is a patented treatment for pancreatic cancer.  The defendant’s product is presently in clinical trials so it is not readily available for sale.

The plaintiff feels that the defendant’s company name is too close it’s own and sued the defendant for trademark infringement in 2019. In its complaint the plaintiff claims that there is a likelihood of consumer confusion, but fails to demonstrate any instances of actual consumer confusion.

Despite the fact the names of the two companies are so similar, the plaintiff is going to have a difficult case ahead of them.  The plaintiff and the defendant operate in separate geographical areas, the plaintiff didn’t register their trademark until after the defendant began using its trademark, and it is difficult to imagine how consumer would confused into buying the defendant’s product thinking it came from the plaintiff.  It is very likely a settlement agreement will reached quickly in this case.

If you have questions or comments for the authors of this blog please email us at: