The Delhi High Court has restrained Alchem International Pvt. Ltd. from using the trademark ‘ALCHEM’, finding it deceptively similar to Alkem Laboratories Ltd.’s registered mark ‘ALKEM’. The Court held that Alchem’s use amounted to trademark infringement and passing off, while also elaborating on the concept of acquiescence under trademark law.

Justice Amit Bansal observed that Alkem could not be said to have “slept over its rights,” since Alchem’s business initially focused only on bulk drugs and APIs and became a competitor only in 2018, when it expanded into the retail pharmaceutical and nutraceutical market, posing a real threat of consumer confusion.

“Even if the plaintiff was aware of the defendant earlier, the scale and nature of the defendant’s business did not endanger the plaintiff’s interests. Therefore, it cannot be said that Alkem stood by while Alchem invested in its business,” the Court held.

Alkem Laboratories, which has been using the trademark since 1973, first discovered Alchem’s presence in 2005 and issued a legal notice. Alchem, incorporated in 1982, contended that Alkem’s inaction for years amounted to acquiescence and that the claim was barred by limitation. Alkem countered that no action was needed earlier as Alchem’s operations were limited, but its large-scale expansion in 2017–18 prompted legal proceedings.

Agreeing with Alkem, the Court noted that Alchem was initially engaged only in export of bulk drugs and APIs, and only started retailing in India from 2006, after the plaintiff had already issued a cease-and-desist notice. The Court also rejected Alchem’s argument that Alkem’s awareness through trade directories or prior communications implied consent. Emails offering products did not establish acquiescence since Alchem was not a competitor at that time.

Explaining the law on acquiescence, the Court laid down key principles:

1. There must be a positive or overt act by the plaintiff; mere silence does not amount to acquiescence.

2. Delay alone in filing a suit cannot justify refusal of injunction if public interest is at stake.

3. Sending a cease-and-desist notice or filing opposition/rectification shows absence of acquiescence.

4. A party knowingly adopting a prior existing mark cannot invoke acquiescence as a defence.

5. To prevent deception or confusion, there should be only one mark, one source, and one proprietor for similar goods.

Applying these principles, the Court found a clear prima facie case in favour of Alkem and granted an injunction restraining Alchem from using ‘ALCHEM’ or any other mark deceptively similar to ‘ALKEM’ in relation to pharmaceuticals or medicinal products.

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

Case No.: CS(COMM) 1050/2018