The Delhi High Court has issued an interim injunction against a UP-based contract manufacturer Alder Biochem using the mark Biochem, in an application filed by Zydus Healthcare Ltd.
In an interim direction, the Court restrained the UP-based company, and its management and others from selling, offering for sale, advertising or using the trademark Alder Biochem and any other marks that contain the mark Biochem or marks which are deceptively similar to Zydus' trade name. It also restrained the firm from using the domain name www.alderbiochem.com or any other domain name containing the mark identical to Biochem.
Zydus informed the Court that the company came across an application filed by the UP-based firm for registration of the mark Alder Biochem, claiming use since January, 2019. In April, 2023, Zydus again came across another application filed by the company for registration of device mark Alder Biochem, claiming usage since January, 2019.
Zydus said that its wholly owned subsidiary has been using the mark Biochem on more than 500 of their pharmaceutical products and it has had a huge reputation and goodwill over several years. The company has also filed notice of opposition with the trademark authority against Alder Biochem's application for the word mark Alder Biochem.
The trademark Biochem was coined and first adopted by Biochem Pharmaceutical Industries in 1959 and in 2004, the company was converted from a partnership to a company and later amalgamated with Zydus Healthcare. All the intellectual property of Biochem Pharmaceutical Industries including the trademark were transferred to Zydus, with this.
Alder Biochem argued that the company was incorporated in 2016 and it has been using the trade name Alder Biochem and Alder as a prefix to its various products, and the primary trademark is Alder. The word Biochem has been added to denote that the company deals with pharmaceuticals, which are chemical products to treat biological ailments.
Zydus do not have exclusive right or registration for the word mark Biochem, per se. More than 100 companies are using the mark Biochem as part of their corporate name. It also argued that there is no similarity between Zydus Healthcare's marks and its marks on a bare comparison.
The Court, hearing both the sides, observed that Zydus Healthcare has established its prior use of the mark Biochem, as against Alder Biochem. A side by side comparison of the marks shows that the UP-based company has "slavishly imitated" the mark of Zydus by adding a prefix Alder. The essential features of the trademark of Zydus was adopted by the Alder Biochem.
"The plaintiffs (Zydus) having established their first user of the mark 'BIOCHEM', the defendant (Alder Biochem) cannot copy the essential/predominant part of the plaintiffs' marks. The overall similarity between the two marks in respect of the same description of goods is likely to cause confusion. Adding of a prefix by the defendant is immaterial, and does not deter from the fact that the impugned mark of the defendant is deceptively similar to the mark of the plaintiff," said Justice Mini Pushkarna, in an order on November 13.
Upon a comparison of the competing marks as a whole, the impugned mark is clearly infringing, since it prominently uses the dominant and essential part of the registered mark of Zydus Healthcare, said the Court.
The Court observed that Alder Biochem's contention that the word Biochem is generic and non-distinctive, used commonly as abbreviation of the word biology and chemistry, and the word Biochem is common to the pharma industry and trade, cannot be adjudicated at this stage as they are a matter of evidence and shall be decided upon trial.
"It is settled law that the onus to establish the existence of the ingredients to substantiate a plea that a mark has become common to trade, has to be established by a party who raises such a plea", said the Court, adding that it is in agreement with the submissions of Zydus that the defendant has failed to put on record a single instance of usage of the mark Biochem by the third parties on pharmaceutical products.
The Court also observed that the sales figures of Zydus' products under the mark Biochem is more than Rs. 200 crore in the year 2022, and in contrast, Alder Biochem's sale of products under the trademark were to the tune of Rs. 21 lakh in 2022-23 and Rs. 38 lakh in 2023-24.
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