IMPORTANT POINT
The use of a deceptively similar mark in the pharmaceutical industry can lead to confusion, warranting injunction to protect the registered trademark.

JUDGMENT :

MINI PUSHKARNA, J:

I.A. 14145/2023 (Application under Order XXXIX Rules 1 & 2 read with Section 151 CPC, 1908)

1. The present application has been filed on behalf of the plaintiffs under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (“CPC”) seeking interim injunction for restraining the defendant from manufacturing, selling, offering for sale, advertising and/or promoting by using the mark/trade name “ALDER BIOCHEM” and any other mark/trade name/label/device that contains the trademark BIOCHEM.

2. The facts as pleaded by the plaintiffs, are as follows:

2.1 The present suit relates to the defendant’s adoption of the identical and deceptively similar mark “ALDER BIOCHEM” and the trade name “Alder Biochem Pvt. Ltd.” in relation to pharmaceutical goods, which amounts to infringement of the plaintiffs” registered trademark “BIOCHEM” under Section 29 of the Trade Marks Act, 1999 (“Trade Marks Act”), as well as passing off.

2.2 The trademark BIOCHEM (device) is registered in the name of plaintiff no.1 and is being used by the plaintiff nos. 1 and 3 on pharmaceutical products. The trademark BIOCHEM was coined and first adopted by the entity named, Biochem Pharmaceutical Industries, in the year 1959. Thereafter, in the year 2004 Biochem Pharmaceutical Industries converted from a partnership to a company under the name Biochem Pharmaceutical Industries Ltd., which was subsequently amalgamated with Zydus Healthcare Ltd., plaintiff no.1 herein. Consequently, all the intellectual property of Biochem Pharmaceutical Industries, including, the trademark BIOCHEM, were transferred to the plaintiff no.1. Thus, plaintiff no.1 is presently the registered proprietor of the trademark BIOCHEM.

2.3 The details of the trade registrations of BIOCHEM, in the name of plaintiff no.1, are as follows:

2.4 The trademarks of the plaintiffs are valid and subsisting as on date.

2.5 In May, 2022, the plaintiff no.1’s representatives in Delhi came across an application filed by the defendant for registration of the mark “ALDER BIOCHEM” under Application No. 4491294 in Class 5, claiming use since 01st January, 2019. Plaintiff no.1 immediately issued a Cease and Desist Legal Notice dated 04th May, 2022 to the defendant. On 01st August, 2022, the defendant issued a reply in response to the plaintiff no.1’s legal notice, refuting the plaintiff no.1’s averments. The defendant stated that it commenced usage of the trade name Alder Biochem Pvt. Ltd. in the year 2016, though the defendant’s trademark application claimed use of the impugned mark since January, 2019.

2.6 Thereafter, in the last week of April, 2023, the plaintiff no.1’s representatives came across another application filed by the defendant for registration of the device mark Alder Biochem under application no. 4495449 in Class 5. The said trademark application claims usage since 01st January, 2019. The plaintiff no.1 immediately filed a notice of opposition dated 28th April, 2023 against the said trademark application, which opposition proceedings, are presently pending before the Trade Marks Registry.

2.7 Plaintiff no.1 and its wholly owned subsidiary-plaintiff no. 3, has been using the trademark BIOCHEM on more than 500 of their pharmaceutical products. The said trademark BIOCHEM has generated huge reputation and goodwill for the plaintiffs over several years. The defendant had subsequently commenced usage of the mark BIOCHEM as part of its infringing trade name ALDER BIOCHEM Pvt. Ltd.

2.8 The defendant has also applied for registration of the infringing word mark ALDER BIOCHEM under Application No. 4491294 in Class 5 for pharmaceutical products on 24th April, 2020, claiming user date since 01st January, 2019. The defendant has also applied for registration of the infringing device mark ALDER BIOCHEM in Class 5 for pharmaceutical products on 04th May, 2020, claiming user date since 01st January, 2019.

2.9 The impugned mark/name ALDER BIOCHEM of the defendant amounts to a brazen violation of the