Haryana-based Alchem International on Thursday moved the division bench of the Delhi High Court, challenging a single-judge’s decision restraining it from selling, manufacturing or dealing with any pharmaceutical product using the name ‘Alchem’, or any other name similar to Mumbai-based Alkem Laboratories‘ ‘Alkem’ trademark till further orders.
A division bench comprising Justices C. Hari Shankar and Om Prakash Shukla said that ‘prima facie’ they were not inclined to interfere with the single judge’s order.
The court will further hear the case on Friday.
Last week, Justice Amit Bansal had passed restraint orders, saying the ‘Alkem’ and ‘Alchem’ trademarks of the two companies were phonetically identical as well as visually and structurally similar.
It said that a stricter approach has to be adopted by courts while judging the likelihood of confusion between the two competing marks for pharmaceutical products, the court stated.
Alkem is the registered proprietor of the ‘Alkem’ trademark and is also the prior user and prior adopter of the mark for medicinal and pharmaceutical products since 1973, the judge said, while noting Alchem International’s stand that it had started using the mark in 1985 and began retail sales in India only in 2006, but has no registration.
“…it cannot be stated that the defendant (Alchem) is an honest and bona fide adopter or concurrent user of the mark ‘Alchem,” the court said, adding that “balance of convenience is in favour of the plaintiff (Alkem) and against the defendant. Irreparable harm and injury would be caused not only to the plaintiff but also to the public at large, if the defendant is permitted to use the said mark, in respect of similar goods, which are in the nature of medicines, having identical and overlapping trade channels, which is likely to cause confusion and deception among the consumers who are ordinary persons of average intelligence and imperfect recollection,” according to the judgment.
However, Justice Bansal allowed the Haryana-based company to “manufacture and sale of APIs (active pharmaceutical ingredients) in India and overseas, provided the same is not used for retail sales in India.”
The direction came after the Alkem’s submitted that it had no objection if the defendant used the mark ‘Alchem’ in respect of APIs for sale in India and abroad.
Alchem had claimed that Alkem’s suit was barred by delay as the latter was aware of its business for over three decades and had taken no action after sending a cease-and-desist notice in 2005. “The plaintiff was aware of the defendant’s business and its use of the mark ‘ALCHEM’ since 1996 (placed reliance on directories from 1996, trade fair participation, meetings and correspondences in 2002–2004), but the plaintiff, inexplicably, waited more than 20 years before filing the suit,” Alchem said.
Opposing Alchem’s stand, Alkem said that it had in 2005 found out that the former was also engaged in the manufacturing and sale of pharmaceutical and allied products. Alchem after getting the Alkem’s cease-and-desist notice found no infringing products in the market. However, in 2018, Alkem learnt that Alchem had been expanding its business under the ‘Alchem’ trademark, thus leading to filing of a suit for permanent injunction in the court.
Alkem said its annual turnover for 2016-17 for products sold under the ‘Alkem’ mark was to the tune of Rs 5,852.5 crore. Besides, it had invested heavily in the promotion and advertisement of the ‘Alkem’ brand from 1973 to 2016-2017. Its annual promotional expenditure for 2016-2017 for products sold under the mark ‘Alkem’ was to the tune of Rs 425.96 crore.
