Delhi High Court Restrains Alchem International From Infringing Trademark Of Alkem Labs, Explains Concept Of Acquiescence

The Delhi High Court has restrained Alchem International Pvt. Ltd., incorporated in the year 1982, from infringing the trademark of Alkem Laboratories Ltd., a company engaged in manufacture and sale of pharmaceutical and nutraceutical products.Justice Amit Bansal observed that it cannot be said that Alkem slept over its rights while the defendant invested in the growth and expansion of its business inasmuch as— initially, Alchem was only dealing with bulk drugs and it emerged as Alkem's competitor only in the year 2018, when it expanded its business activities in a manner that it threatened Alkem's business interests and would likely mislead the customers.“Earlier, even though the plaintiff may be aware of the defendant, the business of the defendant was of a scale that it did not pose a threat to the business interest of the plaintiff…Hence, it cannot be stated that the plaintiff slept over its rights while the defendant invested in the growth and expansion of its business,” the bench said.Alkem Labs has been using the mark continuously since 1973. It came across Alchem International in the year 2005.Alchem claimed that the suit is now barred by limitation and Alkem's long inaction amounts to acquiescence.Alkem on the other hand claimed that since the use of the mark 'ALCHEM' by the defendant was limited, it did not initiate legal proceedings. It was only on account of Alchem launching a large number of competing products in the year 2017-18 and expansion of its activities, that Alkem was constrained to file the suit.Agreeing with Alkem, the High Court however observed that till 2005-06, the defendant was only dealing with bulk drugs and APIs and was supplying or exporting the same to various pharmaceutical companies. “Only in the year 2006, the defendant began retailing its products in India, which was after the legal notice was sent by the plaintiff to the defendant in 2005,” it noted.The Court further said that merely because both Alkem and Alchem are mentioned in a trade directory, it cannot be construed that the former was aware of the latter as a competitor.It further noted that email communications between the two companies, suggesting Alchem wanted to sell its products to Alkem, would not stand as proof of acquiescence as at the time, Alchem could not be viewed as a competitor.The Court then moved on to delineate what constitute acquiescence in law:(i) There has to be a positive/overt act on behalf of the plaintiff. Mere silence on behalf of the plaintiff cannot amount to acquiescence.(ii) Mere delay or laches in filing a suit cannot be the ground for refusing interim injunction as this would be opposed to interest of general public. (iii) Once a cease-and-desist notice is sent by the plaintiff to the defendant and/or an opposition/rectification is filed in respect of the defendant's mark, it cannot be said that there is any acquiescence. (iv) A person/ entity who knowingly adopts the trademark of plaintiff being fully aware of prior existence of the plaintiff, cannot take the defence of acquiescence. (v) To avoid any possibility of deception and confusion in respect of similar products, the Court must ensure that there is only one mark, one source and one proprietor.In the present case, the Court observed that Alkem made out a prima facie case of infringement as well as passing off.It thus restrained Alchem from dealing in any pharmaceutical or medicinal product, under the trademark 'ALCHEM' or any other deceptively similar mark to the plaintiff's mark 'ALKEM'.Appearance: Mr. Rajiv Nayar, Senior Advocate and Mr. Sandeep Sethi, Senior Advocate with Mr. Sagar Chandra, Ms. Ishani Chandra, Ms. Srijan Uppal, Ms. Mehek Dua, Ms. K. Natasha, Ms. Aparna Tripathy, Mr. Subhadeep Das, Ms. Naman and Ms. Shreya, Advocates for Plaintiff; Mr. Raj Shekhar Rao, Senior Advocate with Ms. Sonam Gupta, Mr. Saumay Kapoor, Mr. Shiva Pande, Ms. Meherunissa Jaitley, Ms. Ritvika Poswal and Mr. Sandeep Malik, Advocates for DefendantCase title: Alkem Laboratories Ltd. v. Alchem International Pvt. Ltd.Citation: 2025 LiveLaw (Del) 1303Case no.: CS(COMM) 1050/2018Click here to read order

Delhi High Court Restrains Alchem International From Infringing Trademark Of Alkem Labs, Explains Concept Of Acquiescence

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Delhi High Court Restrains Alchem International From Infringing Trademark Of Alkem Labs, Explains Concept Of Acquiescence

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