Alkem Laboratories Ltd. Vs Alchem International Pvt. Ltd.

Case Title: Alkem Laboratories Ltd. Vs Alchem International Pvt. Ltd.

Order Date: 10th October 2025

Case Number: CSCOMM 10502018, I.A. 101012018, I.A. 36392020, I.A. 142222021, I.A. 144752021, I.A. 155142021

Neutral Citation: 2025:DHC:10502018

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Justice Amit Bansal

Fact:

Alkem Laboratories Ltd. (Plaintiff) was incorporated in 1973 and uses the trademark ALKEM for pharmaceutical and nutraceutical products, with significant market presence and multiple registered trademarks dating back to 1973. Alchem International Pvt. Ltd. (Defendant), incorporated in 1982, uses the mark ALCHEM for pharmaceutical-related goods including API and Ayurvedic extracts and began retail sales in India from 2006. The Plaintiff alleged that the Defendant's use of the mark ALCHEM infringed its trademark ALKEM, causing confusion, and filed suit for permanent injunction against Defendant's use of ALCHEM for overlapping products.

Procedural Details:

The Plaintiff filed the suit in 2018 along with interim injunction applications under Order XXXIX Rule 1 and 2 CPC to restrain Defendant from using ALCHEM mark, seeking to maintain the status quo, and subsequent applications were filed as Defendant amplified its marketing of ALCHEM. Mediation was attempted but unsuccessful. The Defendant filed applications seeking to vacate interim orders. The matter was heard across multiple dates ending with judgment reserved on 11th July 2025 and pronounced on 10th October 2025 by Justice Amit Bansal.

Dispute:

The core dispute is over trademark infringement and passing off. Plaintiff claims prior use and registration of ALKEM since 1973 and challenges Defendant's adoption of the deceptively similar mark ALCHEM from 1985 onwards, especially for retail sales starting 2006. Defendant pleads honest concurrent use since the 1980s, contends lack of confusion due to different product lines, asserts acquiescence and delay by Plaintiff, and denies infringement, claiming ALCHEM is only a source identifier on labels.

Detailed Reasoning:

The Court examined the facts that the marks ALKEM and ALCHEM are phonetically identical and visually similar. Plaintiff held trademark registrations and had significant goodwill and reputation in ALKEM since 1973. Defendant started use in 1985 but only began retail sales in India in 2006. The Court found Plaintiff to be the prior user and registered proprietor, while Defendant had no trademark registration in India for ALCHEM despite multiple applications.

On acquiescence and delay, the Defendant's plea was rejected relying on legal precedents establishing that mere silence or delay does not amount to acquiescence. There must be positive encouragement or consent to be acquiescence. The Court held Plaintiff took positive steps like cease-and-desist notices and oppositions to prevent Defendant’s registration attempts, negating acquiescence claims. The Court noted Plaintiff filed suit when Defendant expanded business in similar product segments post-2017, which justified timing.

The Defendant's claim of honest concurrent use was rejected since it was aware of Plaintiff's prior rights and goodwill but adopted a confusingly similar mark, especially when moving into retail sales post-defiance of legal notices. The defense that products were different and no likelihood of confusion was also dismissed. Evidence showed both dealt with overlapping pharmaceutical and nutraceutical products through similar trade channels, pharmacies, and online platforms, leading to potential consumer confusion.

The Defendant's argument that ALCHEM was used as a mere source identifier on packaging was contradicted by promotional activities, including standalone use of the ALCHEM mark in advertisements, videos, and media, constituting infringement under Section 29(5) and (6) of the Trade Marks Act, 1999.

In assessing balance of convenience and irreparable harm, the Court sided with Plaintiff, noting harm to Plaintiff's goodwill and public confusion risks.

Judgment:

The Court granted interim injunction restraining Defendant from selling, manufacturing, advertising, or in any manner dealing with pharmaceutical or medicinal products under the mark ALCHEM or any deceptively similar mark to ALKEM in India for retail purposes. The injunction does not apply to Defendant's use of ALCHEM for manufacture and sale of APIs for sale in India and abroad, provided it is not used for retail sales in India.

The suit thus prima facie established trademark infringement and passing off by Defendant. The Defendant's defenses of acquiescence, bona fide use, product differentiation, and non-confusion were rejected on prima facie review. Final resolution was listed for further hearing.

Relevant Legal Provisions Discussed:

• Section 29(5) and (6), Trade Marks Act, 1999 concerning infringement by use of marks causing confusion

• Order XXXIX Rule 1, 2, and 4 of the Code of Civil Procedure, 1908 governing interim injunctions and status quo maintenance

• Doctrine of acquiescence and delay as discussed in Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. (1989) PTC 61, Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448, Midas Hygiene Industries v. Sudhir Bhatia (2004), and subsequent Delhi High Court rulings

• Principle that prior user and registered proprietor rights prevail and that likelihood of confusion must be prevented especially in pharmaceutical products (citing Cadila Health Care v. Cadila Pharmaceuticals, 2001 5 SCC 73)

The Court emphasized that for similar pharmaceutical products, a stricter standard applies to avoid confusion, promoting “one mark, one source, one proprietor” doctrine in trademark protection.

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

Suggested Titles for Legal Research Paper:

1. "Trademark Conflicts in Pharmaceuticals: Analysis of Alkem Laboratories vs Alchem International"

2. "Doctrine of Acquiescence and Concurrent Use in Indian Trademark Law: A Case Study"

3. "Balancing Prior Use and Honest Adoption: Trademark Infringement in Pharmaceutical Industry"

4. "Likelihood of Confusion and Passing Off: Lessons from Alkem Laboratories Litigation"

5. "Interim Injunctions and Trademark Protection in the Health Sector: A Judicial Perspective"