Delhi High Court Upholds Injunction Against Alder Biochem Over 'BIOCHEM' Mark In Zydus' Suit

The Delhi High Court has recently dismissed an appeal by Alder Biochem Private Limited against an injunction restraining it from using 'ALDER BIOCHEM'.

The court found the mark deceptively similar to Zydus Healthcare's registered 'BIOCHEM' device mark for pharmaceutical products.

A Division Bench of Justice Nitin Wasudeo Sambre and Justice Anish Dayal upheld the November 2024 order of the Single Judge. The order restrained Alder Biochem from selling, offering for sale, advertising, promoting or using 'ALDER BIOCHEM' or any mark containing 'BIOCHEM' that was deceptively similar to Zydus' mark.

The court observed that consumers encountering 'ALDER BIOCHEM' and 'BIOCHEM' could assume that the former was a derivative or extension of the latter. This was particularly so because both marks were being used for pharmaceutical products.

“A consumer encountering product bearing 'ALDER BIOCHEM' on one hand and 'BIOCHEM' on the other is likely to assume that the former is a derivative or an extension of the respondent/plaintiff's product, particularly as both pertain to pharmaceutical products,” the bench ruled.

Zydus Healthcare, along with Biochem Pharmaceutical Private Limited and German Remedies Pharmaceuticals, had filed a suit alleging trademark infringement and passing off.

According to the judgment, Biochem Pharmaceutical Industries had claimed to have coined and first adopted the 'BIOCHEM' mark in 1959. The company was later amalgamated with Zydus Healthcare under a 2017 order of the NCLT, Ahmedabad. Its intellectual property, including the 'BIOCHEM' trademark, was transferred to Zydus Healthcare.

The 'BIOCHEM' mark is registered as a device mark. One registration records an application date of March 9, 1961, with a user date of January 1, 1959.

Alder Biochem was incorporated around 2016. It registered the domain name “alderbiochem.com” in August 2018 and adopted 'ALDER BIOCHEM' in 2019 for manufacturing and marketing pharmaceutical and nutraceutical products.

The Single Judge initially granted an ad interim injunction. The injunction application was finally disposed of through the November 13, 2024 judgment, with the restraint continuing.

The Single Judge held that the “prominent, essential and dominant feature” of Zydus' mark was 'BIOCHEM'. Alder Biochem was using the same word for identical pharmaceutical products.

Senior Advocate J. Sai Deepak, appearing for Alder Biochem, argued that 'BIOCHEM' was a common abbreviation or portmanteau of “Biology” and “Chemistry”. He contended that the term lacked distinctiveness and was used by around 100 entities as part of their corporate names.

He also argued that Zydus had registered only a device mark and had not separately registered the word 'BIOCHEM'. The bench rejected the argument, holding that a prominent word forming part of a registered device mark could receive protection.

The bench noted that Alder Biochem's evidence of first commercial use dated to 2022. Zydus, meanwhile, had placed material showing use of 'BIOCHEM' since the 1960s.

“The issue of prior use, therefore, cannot be disputed, as that aspect clearly lies in favour of respondent/plaintiffs,” the court observed.

The court also held that Alder Biochem could not rely on non-distinctiveness, particularly since it had itself applied for registration of the composite mark 'ALDER BIOCHEM'.

“Read in the context of Section 17 of TM Act, such conduct does not support the plea that the respondent/plaintiff's mark lacks distinctiveness,” the court observed.

On third-party use, the bench noted that most entities cited by Alder Biochem appeared to operate in fertilizers, metals and chemicals rather than pharmaceuticals. Mere registration, it observed, did not establish actual commercial use of 'BIOCHEM' in relation to pharmaceutical products.

The bench found that the Single Judge had considered the relevant issues, including use and adoption, deceptive similarity, protection available to a device mark, dominant-feature and anti-dissection principles, and non-distinctiveness.

“This Court finds no reason to interfere with the decision passed by the Single Judge or with the injunction granted thereby,” the bench ruled.

The appeal was dismissed, and the directions passed by the Single Judge were allowed to continue. The bench clarified that its observations were prima facie and would remain subject to final adjudication of the suit.