Alkem Laboratories Ltd. Vs. Alchem International Pvt. Ltd.

Phonetic Similarity and Likelihood of Confusion

Fact: The plaintiff, Alkem Laboratories Ltd., is a pharmaceutical company incorporated in 1973, engaged in the development, manufacture, and sale of pharmaceutical and nutraceutical products. The plaintiff owns the registered trademark "ALKEM," and has been using it continuously since 1973. The defendant, Alchem International Pvt. Ltd., incorporated in 1982, provides plant-derived active ingredients and Ayurvedic extracts, selling products under the mark "ALCHEM." The defendant has been using this mark since 1985, primarily in export markets until it started retailing in India in 2006. The plaintiff sent a cease-and-desist notice in 2005 after discovering the defendant's expanded use of the mark, leading to the filing of the present suit in 2018 for trademark infringement, passing off, and related reliefs.

Procedural Details: The suit seeks permanent injunction restraining the defendant from infringing the plaintiff's trademark "ALKEM." The plaintiff filed interim injunction applications starting in 2018 to maintain status quo on the defendant's use and advertising of the mark "ALCHEM." The defendant filed an application to vacate the interim order. The parties were referred to unsuccessful mediation in 2022. The suit and related applications were heard on multiple dates with the judgment reserved on July 11, 2025, and pronounced on October 10, 2025.

Dispute: The core dispute revolves around the alleged trademark infringement and passing off by the defendant through its use of the mark "ALCHEM," which the plaintiff claims is phonetically and visually similar to the registered mark "ALKEM." The plaintiff contends that the defendant's use causes confusion among consumers, infringing their rights. The defendant denies infringement, asserting concurrent use of its mark since 1985, bona fide adoption derived from the words "Alkaloids" and "Chemicals," and non-overlapping product lines initially limited to bulk drugs and exports. The defendant also alleges plaintiff's acquiescence and laches for delay in filing the suit.

Detailed Reasoning: The Court observed that the marks "ALKEM" and "ALCHEM" are phonetically identical and visually similar to a deceptive extent, which is undisputed. The plaintiff, having adopted and registered "ALKEM" since 1973, is the prior user and proprietor, whereas the defendant adopted "ALCHEM" in 1982 and began retail sales in India only after 2006. The defendant’s registrations remain ungranted in India.

Regarding acquiescence and delay, the Court referred to settled principles from precedent cases. Mere silence or delay by the plaintiff does not amount to acquiescence unless there is positive encouragement of the defendant’s use. The plaintiff issued cease-and-desist notices and filed oppositions against the defendant's trademark applications repeatedly, negating any acquiescence claim. The Court held that delay and laches cannot bar injunctions, especially when public interest and likelihood of confusion exist.

The defendant’s claim of honest concurrent user status was rejected. Despite the defendant’s argument of bona fide adoption due to the composite nature of the word "ALCHEM," the Court pointed out that the defendant knew of the plaintiff’s prior and registered use. The defendant’s expansion of retail activities overlapping with plaintiff’s product range post-2005 demonstrated intent to capitalize on plaintiff’s goodwill, thus negating bona fide use.

On the issue of product similarity and likelihood of confusion, the Court found that both parties dealt in overlapping pharmaceutical and nutraceutical products distributed through the same trade channels. Consumer confusion is likely especially among average consumers, medical practitioners, and pharmacists.

The defense that "ALCHEM" was used only as a source identifier was contradicted by evidence of extensive advertising, prominent display on packaging, and standalone use of the mark by the defendant. Therefore, the defendant’s use was likely to cause confusion, infringing Sections 29(5) and 29(6) of the Trade Marks Act, 1999.

The Court also considered the balance of convenience and irreparable harm. It held that allowing the defendant to continue use would cause confusion and harm to both the plaintiff and the public.

Decision: The Court granted an interim injunction restraining the defendant, its associates, and agents from using the mark "ALCHEM" or any deceptively similar mark in relation to pharmaceutical or medicinal products in India, except in respect of manufacturing and sale of Active Pharmaceutical Ingredients (APIs), where the plaintiff consented to such use. 

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

Order Date: October 10, 2025

Case Number: CSCOMM 1050/2018

Neutral Citation: 2025:DHC:8992

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Mr. Justice Amit Bansal

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