Arochem Ratlam Pvt. Ltd. & Anr. Vs Arom Alchemists Private Limited

Essential Features and Composite Marks

Introduction :This case involves a dispute over trademark infringement and passing off in the perfumery industry, where the plaintiffs, Arochem Ratlam Pvt Ltd and another, sought to protect their trademarks "AROCHEM" and "AROME" against the defendants, Arom Alchemists Private Limited and others. The plaintiffs claimed that the defendants' use of "AROM ALCHEMISTS" was deceptively similar to their marks, leading to confusion among consumers. The court examined the phonetic and visual similarities, the honesty of adoption, and the goodwill associated with the marks, ultimately granting partial interim relief to the plaintiffs while denying others. 

Factual Background: The plaintiffs and defendants are both engaged in manufacturing, marketing, selling, and distributing perfumery products, including perfumes and fragrances. The first plaintiff originated as a partnership firm called Arochem Industries in 1969, using the mark "AROCHEM" since September 1, 1969. This mark was registered in Class 3 in 1996 and assigned to the first plaintiff in 2013. The plaintiffs hold about 93 registrations for "AROCHEM" and its variants. In March 2021, the plaintiffs began using "AROME" while retaining "AROCHEM" as a key feature, and registered "AROME" on March 8, 2021, along with variants like "AROME BLUE ISLAND," "AROME WORLD," "AROME SCENT ART," and "AROME THE LEGEND." To demonstrate goodwill, the plaintiffs provided combined sales figures certified by a chartered accountant, showing Rs. 872,30,499 in sales for 2022-23, with advertisement expenses of Rs. 16,11,644 and promotional expenses of Rs. 3,09,226. The defendants incorporated on January 3, 2023, and adopted "AROM ALCHEMISTS," claiming it as a misspelling of "AROMA" combined with "ALCHEMISTS," meaning a person studying alchemy. The second defendant was an ex-employee of the second plaintiff from November 2017 to May 2018. The defendants applied for registration of "AROM" on May 12, 2023, on a proposed-to-be-used basis, but faced objections under Section 11 citing the plaintiffs' marks. The plaintiffs issued a cease-and-desist notice on December 18, 2023, to which the defendants responded by denying infringement and filing a rectification application against "AROME" on December 23, 2023. The plaintiffs alleged the defendants advertised in the same magazines, participated in the same exhibitions, induced their employees, and caused confusion among customers who mistook the defendants' products for theirs.

Procedural Background> The plaintiffs filed a commercial IP suit for trademark infringement and passing off in the Bombay High Court, along with an interim application seeking temporary injunctions. The suit was lodged as Commercial IP Suit (Lodging) No. 32272 of 2024, and the interim application as Interim Application (Lodging) No. 32451 of 2024. 

Core Dispute: The central issue revolved around whether the defendants' mark "AROM ALCHEMISTS" infringed the plaintiffs' registered trademarks "AROCHEM" and "AROME" under Sections 28 and 29 of the Trade Marks Act, 1999, and amounted to passing off. The plaintiffs argued phonetic and deceptive similarity, especially with "AROME," claiming the defendants highlighted "AROM" while downplaying "ALCHEMISTS," leading to confusion. They emphasized prior use, registrations, and dishonest adoption by an ex-employee. The defendants contended that "AROM" was a generic misspelling of "AROMA," used as part of a composite mark, and denied standalone use of "AROM." They challenged the plaintiffs' goodwill for passing off, argued no monopoly over descriptive words, and claimed honest adoption. Additional disputes included the domain name "aromapl.com" and inducement of employees.

Discussion on Judgments: The plaintiffs relied on several judgments to support their claims of infringement and deceptive similarity. In Ruston & Hornsby Ltd vs. The Zamindara Engineering Co (1969 (2) SCC 727), cited to emphasize that deceptive similarity should be assessed phonetically and visually, and that infringement occurs if the essential features are copied. James Chadwick & Bros., Ltd Vs. The National Sewing Thread Co., Ltd. (OCJ App No. 95 of 1950) was referred to for principles on likelihood of confusion from similar marks in related goods. Sky Enterprise Private Ltd vs. Abaad Masala & Co. (2020 SCC Online BOM 750) was used to argue against the use of generic defenses when marks are distinctive. Neon Laboratories Limited vs. Medical Technologies Limited ((2016) 2 SCC 672) supported the first-user rule and presumption of confusion for identical goods. Ultra Tech Cement Limited vs. Alaknanda Cement Pvt Ltd (2011 SCC Online Bom 783) was invoked to highlight that suffixes do not negate infringement if core marks are similar. Jagdish Gopal Kamath vs. Lime & Chilli Hospitality services (2015 SCC Online Bom 531) was cited to counter claims of marks being common to trade, requiring proof of extensive use. Lupin Limited vs. Eris Lifesciences Pvt. Ltd (2015 SCC Online Bom 6807) was emphasized to limit challenges to registration validity unless ex-facie fraudulent. The defendants countered with judgments focusing on composite marks and generic terms. Phonepe Private Limited vs. EZY Services (2021 SCC Online Del 2635) and Delhivery Private Limited vs. Treasure Vase Ventures Pvt. Ltd. (2020 SCC Online Del 2766) were cited to argue against dissecting marks and for considering them as wholes. Paramjeet Singh Nande vs. Paramount Toys & Ors. (Order in OOJC Interim Application (L) No. 35055 of 2023 dated 10th June, 2025) supported non-solicitation limits. M/s Gufic Ltd vs. Clinique Laboratories, LLC (Order of Delhi High Court in FAO (OS) 222/2009 dated 9th July, 2010) was used to stress holistic comparison without dissection. Ayushakti Ayurved Pvt Ltd vs. Hindustan Lever Limited (2003 (5) Bom. C. R. 523) argued that inseparable parts of marks must be pronounced together. Marico Limited vs. Agro Tech Foods Limited (2010 SCC Online Del 3806) defended generic words as non-monopolizable. Honda Motor Company Limited vs. Kewal Brothers (1999 SCC Online Cal 536) set the relevant date for passing off as the defendant's adoption. Sun Pharmaceuticals Industries Ltd vs. Emcure Pharmaceuticals Ltd. (2012(2) Mh.L.J) and G. M. Sheik vs. M/s. Raja Biri Private Ltd (Order of Kerala High Court in FAO No. 94 of 2022 dated 31st August, 2022) reinforced considering marks wholly and proving extensive use for common-to-trade defenses.

Reasoning and Analysis of the Judge: Justice Sharmila U. Deshmukh analyzed the case by first confirming the plaintiffs' registrations and prior use, noting "AROCHEM" since 1969 and "AROME" since 2021. She compared the marks, finding phonetic similarity between "AROME" and "AROM," with the latter subsuming the former despite the addition of "ALCHEMISTS." The judge rejected the defendants' claim that "AROM" was a generic misspelling of "AROMA," as "AROME" differed phonetically and was not a dictionary word. She emphasized that marks must be compared as wholes but focused on essential features, citing precedents like Ruston & Hornsby for deceptive resemblance. The examination report citing conflicts and the defendants' ex-employee status indicated dishonest adoption, dismissing honest use claims. For infringement, she applied Section 29, presuming confusion due to identical goods and similarity. However, for passing off, she found insufficient evidence of goodwill, as sales figures were combined and invoices limited, failing to show public association by 2023. The judge vacated the employee inducement injunction, as it fell outside Section 135 reliefs. Acquiescence was rejected, as mere delay without encouragement does not bar relief.

Final Decision :The court allowed the interim application , granting an injunction restraining the defendants from using "AROM" or similar marks infringing "AROME," but excluding references to "AROCHEM" and the domain name portion. 

Law Settled in This Case: This case reaffirms that trademark infringement under Section 29 requires deceptive similarity in essential features, assessed phonetically and visually, with presumption of confusion for identical goods. It clarifies that additions like suffixes do not negate infringement if the core mark is copied, and generic defenses fail if marks are distinctive. For passing off, prior continuous use and substantial goodwill must be proven as of the defendant's adoption date, with combined sales figures insufficient. Challenges to registration validity are limited unless ex-facie fraudulent. Reliefs in infringement suits are confined to Section 135, excluding non-IP issues like employee inducement. Acquiescence demands positive encouragement, not mere delay.

Case Title: Arochem Ratlam Pvt. Ltd. & Anr. Vs Arom Alchemists Private Limited & Ors., 

Date of Order: August 12, 2025, 

Case Number: Commercial IP Suit (Lodging) No. 32272 of 2024, 

Neutral Citation: 2025:BHC-OS:13265, 

Name of Court: High Court of  Bombay

Name of Hon'ble Judge: Sharmila U. Deshmukh, J.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi