Delhi High Court restrains Alchem International from using ‘ALCHEM’ mark for retail pharma products

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 [Alkem Laboratories v. Alchem International]..The interim order was passed on October 10 in a trademark infringement suit filed by Alkem against Alchem International.The Court held that Alkem was the prior adopter and registered proprietor of the mark 'Alkem', and that Alchem’s continued use of a similar mark for similar products did not appear to be bona fide..Justice Amit Bansal observed,"The marks of the plaintiff ‘ALKEM’ and of the defendant ‘ALCHEM’ are phonetically identical and visually and structurally deceptively similar. The plaintiff is the registered proprietor of the mark ‘ALKEM’. The plaintiff is also the prior user, and prior adoptor of the mark ‘ALKEM’ for medicinal and pharmaceutical products.” The Court emphasised that such similarity in the pharmaceutical sector could have public health implications..Alkem Laboratories, incorporated in 1973, is among India’s largest pharmaceutical companies with over 700 brands spanning major therapeutic categories. It has used the mark ‘ALKEM’ as part of its corporate identity and branding since incorporation and holds trademark registrations under multiple classes, with the earliest dating back to October 1973.The company contended that Alchem’s increasing use of ‘ALCHEM’ for consumer-facing products, online advertising, and expanded trade channels was likely to cause confusion and amounted to trademark infringement and passing off.Alchem International, incorporated in 1982, manufactures plant-derived active ingredients and Ayurvedic extracts. It began using ‘ALCHEM’ in 1985, asserting that the mark was coined from the words “Alkaloids and Chemicals.” Before the High Court, Alchem argued that Alkem's suit was barred by delay and acquiescence, claiming that Alkem was aware of its business for decades and had taken no action after sending a cease-and-desist notice in 2005. It also contended that Alchem's operations—focused on nutraceuticals and herbal extracts—were distinct from Alkem’s prescription drug business.The company further relied on a 1990 Bombay High Court order that had refused interim relief to Alkem in an earlier dispute involving another entity using the “Alchem” name, arguing that Alkem’s mark lacked reputation at the time. Alchem also maintained that its use of the mark for exports and Active Pharmaceutical Ingredients (API) manufacture since 1985 constituted honest and concurrent use..Justice Bansal rejected these defences, finding that Alkem had consistently acted to protect its mark by issuing a legal notice in 2005 and filing multiple oppositions before the Trade Marks Registry between 2010 and 2018. “There has been no positive act on behalf of the plaintiff which in any way condones the act of the defendant,” the Court held.It added that Alchem’s expansion into retail sales in India after receiving the legal notice could not be treated as bona fide. .The Court also rejected Alchem’s claim that the parties catered to different markets, noting that both companies operated in overlapping segments—pharmaceuticals, nutraceuticals, and health supplements—sold through similar channels such as chemists and e-pharmacies. Referring to the Supreme Court’s ruling in Cadila Health Care v. Cadila Pharmaceuticals, Justice Bansal observed that a stricter approach has to be adopted in cases involving medicinal products, where confusion may have consequences for public health.Holding that the balance of convenience favoured Alkem, the Court concluded that allowing Alchem to continue using the mark would cause irreparable harm not only to Alkem but also to consumers who could be misled by the similarity. Accordingly, the Court restrained Alchem from using ‘ALCHEM’ or any deceptively similar mark in relation to pharmaceutical or medicinal products.However, the injunction will not apply to Alchem’s manufacture and sale of API in India or abroad, provided such products are not sold at retail..Alkem was represented by Senior Advocates Rajiv Nayar and Sandeep Sethi alongwith Advocates Sagar Chandra, Ishani Chandra, Srijan Uppal, Mehek Dua, K Natasha, Aparna Tripathy, Subhadeep Das, Naman, and Shreya..Alchem International was represented by Senior Advocate Rajshekhar Rao with Sonam Gupta, Saumay Kapoor, Shiva Pande, Meherunissa Jaitley, Ritvika Poswal, and Sandeep Malik, Advocates..[Read Judgment]