Trademark Tussle: Delhi High Court Restrains 'ALCHEM' in Favour of 'ALKEM' Over Brand Confusion Concerns

Trademark Tussle: Delhi High Court Restrains 'ALCHEM' in Favour of 'ALKEM' Over Brand Confusion Concerns

Introduction

The Delhi High Court has restrained Alchem International Pvt Ltd from manufacturing, selling, or advertising any pharmaceutical or medicinal products under the mark 'ALCHEM' or any other deceptively similar mark to 'ALKEM', owned by Alkem Laboratories Ltd.

Factual Background

Alkem Laboratories, a leading pharmaceutical company, has been using the mark 'ALKEM' since 1973 and holds trademark registrations under multiple classes. Alchem International, established in 1982, manufactures plant-derived active ingredients and Ayurvedic extracts and has been using the mark 'ALCHEM' since 1985.

Procedural Background

Alkem Laboratories filed a trademark infringement suit against Alchem International, alleging that the latter's use of a similar mark was likely to cause confusion and harm its reputation. Alchem International argued that Alkem's suit was barred by delay and acquiescence, and that the two companies operated in different markets.

Contentions of the Parties

Alkem Laboratories: Contended that Alchem's use of a similar mark was likely to cause confusion and harm its reputation. Alkem argued that it had consistently protected its mark and had issued a legal notice to Alchem International in 2005.

Alchem International: Argued that Alkem's suit was barred by delay and acquiescence, and that the two companies operated in different markets. Alchem claimed that its use of the mark 'ALCHEM' was honest and concurrent.

Reasoning and Analysis

The bench of Justice Amit Bansal observed that the marks 'ALKEM' and 'ALCHEM' were phonetically identical and visually and structurally deceptively similar. The Court held that Alkem had consistently acted to protect its mark and that Alchem's expansion into retail sales in India after receiving the legal notice could not be treated as bona fide.

Decision

The Court restrained Alchem International from using the mark 'ALCHEM' or any other deceptively similar mark in relation to pharmaceutical or medicinal products. However, the injunction will not apply to Alchem's manufacture and sale of Active Pharmaceutical Ingredients (API) in India or abroad, provided such products are not sold at retail.

Implications

The decision highlights the importance of protecting trademarks in the pharmaceutical industry, where confusion can have serious consequences for public health. The Court's stricter approach in such cases emphasizes the need for companies to ensure that their marks do not cause confusion or harm to other companies or consumers.

In this case the plaintiff was represented by Mr. Rajiv Nayar, Senior Advocate and Mr. Sandeep Sethi, Senior Advocate with Mr. Sagar Chandra, Ms. Ishani Chandra, Ms. Srijan Uppal, Ms. Mehek Dua, Ms. K. Natasha, Ms. Aparna Tripathy, Mr. Subhadeep Das, Ms. Naman and Ms. Shreya, Advocates.

Meanwhile the respondent was represented by Mr. Raj Shekhar Rao, Senior Advocate with Ms. Sonam Gupta, Mr. Saumay Kapoor, Mr. Shiva Pande, Ms. Meherunissa Jaitley, Ms. Ritvika Poswal and Mr. Sandeep Malik, Advocates.