Delhi High Court: In an application under Order 39, Rules 1 and 2 of the Civil Procedure Code, 1908, wherein the petitioner, Alkem Laboratories sought an interim injunction restraining the defendant, Alchem International from using the trade mark ‘ALCHEM’ in sale of its pharmaceutical and medical products, the Single Judge Bench of Amit Bansal, J, held that the plaintiff’s mark ‘ALKEM’ and the defendant’s mark ‘ALCHEM’ were phonetically and visually similar.
Thus, the Court granted an interim injunction restraining the defendants from using the mark ‘ALCHEM’ for manufacturing and selling its medical and pharmaceutical products.
Background
The plaintiff company, Alkem Laboratories Ltd., is a pharmaceutical company, incorporated in 1973 and engaged in the development, manufacture and sale of pharmaceutical and nutraceutical products.
The plaintiff is the registered proprietor of the trade mark ‘ALKEM’ and has been using it continuously since 1973. It has a large market presence in the pharmaceutical industry, not only in India but also worldwide.
The defendant company, Alchem International Pvt. Ltd., incorporated in 1982, is engaged in the business of providing plant- derived active ingredients and ayurvedic extracts to pharmaceutical, cosmetic and nutraceutical industries. The defendant claimed to have adopted the mark ‘ALCHEM’ in 1982, deriving it as a combination of two words, i.e. ‘Alkaloids and Chemicals’. To establish long and continuous use, the defendant placed reliance on trade mark registrations of the mark ‘ALCHEM’ in over 49 countries.
The plaintiff had become aware of the defendant’s products in 2005 and had subsequently sent a cease-and-desist notice to restrain them from using the mark ‘ALCHEM’. Later, the plaintiff did not find any infringing products in the market and took no further action. However, in 2018, the plaintiff learned that the defendant had expanded its business under the trade name ‘ALCHEM’. Consequently, the plaintiff filed the instant suit in 2018.
Analysis, Law and Decision
The Court noted that the competing marks of ‘ALKEM’ and ‘ALCHEM’ are indisputably phonetically similar. The Court addressed the several points of defense raised by the defendant:
1. Plaintiff has acquiesced to the defendant’s use of the mark and the suit is inordinately delayed
The defendant had contended that the plaintiff and the defendant had co-existed together for a long while and were aware of each other’s existence. The Court had relied on the judgments of Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, Midas Hygiene Industries v. Sudhir Bhatia, 2004 SCC OnLine SC 106, Adidas AG v. Keshav H. Tulsiani, 2024 SCC OnLine Del 4940 and summarized the legal principles regarding the question of acquiescence as follows:
-
In order to constitute acquiescence, there has to be a positive or overt act on behalf of the plaintiff. Mere silence on behalf of the plaintiff cannot amount to acquiescence.
-
Mere delay or laches in filing a suit cannot be the ground for refusing interim injunction as this would be opposed to interest of general public.
-
Once a cease-and-desist notice is sent by the plaintiff to the defendant and/or an opposition/rectification is filed in respect of the defendant’s mark, it cannot be said that there is any acquiescence.
-
A person/ entity who knowingly adopts the trade mark of plaintiff being fully aware of prior existence of the plaintiff, cannot take the defense of acquiescence.
-
To avoid any possibility of deception and confusion in respect of similar products, the Court must ensure that there is only one mark, one source and one proprietor.
The Court further noted that the plaintiff had filed the instant suit only when it was of the view that the defendant’s business activities had expanded in a manner that threatened the business interests of the plaintiff and would likely mislead the customers. Thus, the Court opined that the cease-and-desist notice and oppositions filed by the plaintiff to the defendant’s trade mark applications constituted sufficient warnings to the defendant and it cannot be said that there was an overt act of condonation by the plaintiff.
2. Defendant is an honest and concurrent user
The defendant had contended that when it was incorporated in 1982, the plaintiff had not acquired any goodwill or reputation in the market. However, the Court noted that volume of sales achieved by the plaintiff in the year 1982 alone evidenced that it had substantial goodwill and reputation in the market. The Court noted that defendants failed to show that they were not aware of the plaintiff’s existence at the time of their incorporation and therefore cannot be called an honest and bona fide adopter of the mark ‘ALCHEM’.
3. Plaintiff and defendants manufacture and sell different products and there is no scope of confusion amongst the consumers
The defendant had contended that it deals with non-generic and ayurvedic products whereas the plaintiff deals with prescription drugs and pharmaceutical products. The Court noted that from the material on record, it was evident that both the plaintiff and the defendant are dealing with medicinal and pharmaceutical products, which would also include health supplements, vitamins and multi-minerals and nutraceutical products. The trade channels of the products of the plaintiff and the defendant are same. Thus, the Court opined that there was similarity in the products sold by both the parties and on account of the same, there was likelihood of confusion in the market especially among the medical practitioners, pharmacists etc. as well as the general public at large.
4. There is no likelihood of confusion as the defendant’s mark ‘ALCHEM’ appears only as a source identifier on its labels
The defendants had submitted that their products were identified by their generic or product names and the mark ‘ALCHEM’ appeared only as a source identifier. The Court, however, noted that the defendant had used the mark ‘ALCHEM’ and ‘ALCHEMLIFE’ in a standalone manner and had displayed it prominently on its product packaging and online advertisements. Thus, the Court opined that the defendant’s use of the mark ‘ALCHEM/ ALCHEMLIFE’ on its product packaging as well as in advertising would amount to infringement under Section 29(5) and (6) of the Trade Marks Act, 1999.
Therefore, the Court held that the marks ‘ALKEM’ and ‘ALCHEM’ were phonetically identical and visually and structurally deceptively similar. The plaintiff had established goodwill and reputation in the market and was the prior user of the mark ‘ALKEM’. The Court ruled that the balance of convenience was in favour of the plaintiffs, and irreparable harm would be caused to the plaintiffs if the defendants were not restrained.
Consequently, the Court restrained the defendants and all persons acting on its behalf from selling, manufacturing, promoting or marketing etc., any pharmaceutical or medical product under the trade mark ‘ALCHEM’.
[Alkem Laboratories Ltd. v. Alchem International Pvt. Ltd., CS (COMM) No. 1050 of 2018, decided on 10-10-2025]
Advocates who appeared in this case:
For the Plaintiff: Rajiv Nayar, Sandeep Sethi Senior Advocates, Sagar Chandra, Ishani Chandra, Srijan Uppal, Mehek Dua, K. Natasha, Aparna Tripathy, Subhadeep Das, Naman and Shreya, Advocates
For the Defendant: Raj Shekhar Rao, Senior Advocate, Sonam Gupta, Saumay Kapoor, Shiva Pande, Meherunissa Jaitley, Ritvika Poswal, Sandeep Malik, Advocates