Zydus Healthcare Limited & Ors. vs. Alder Biochem Private Limited

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 516/2023, I.A. 14145/2023 & I.A. 3116/2024
ZYDUS HEALTHCARE LIMITED & ORS. .....Plaintiffs
Through: Mr. Chander M. Lall, Sr. Adv. with
Ms. Aadya Chawla, Ms. Nandini
Choudhary, Mr. Abhinav Bhalla and
Ms. Annanya Mehan, Advs.
M: 9599547073
Email: nandini@singhandsingh.com
versus

ALDER BIOCHEM PRIVATE LIMITED .....Defendant
Through: Mr. J. Sai Deepak, Mr. Ankur Sangal,
Ms. Sucheta Roy and Mr. Kiratraj and
Sadana, Advs.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
J U D G M E N T
13.11.2024
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
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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:

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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
st
01 January, 2019. Plaintiff no.1 immediately issued a Cease and Desist
th st
Legal Notice dated 04 May, 2022 to the defendant. On 01 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.
st
The said trademark application claims usage since 01 January, 2019. The
th
plaintiff no.1 immediately filed a notice of opposition dated 28 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
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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
th st
pharmaceutical products on 24 April, 2020, claiming user date since 01
January, 2019. The defendant has also applied for registration of the
infringing device mark ALDER BIOCHEM in Class 5 for pharmaceutical
th st
products on 04 May, 2020, claiming user date since 01 January, 2019.
2.9 The impugned mark/name ALDER BIOCHEM of the defendant
amounts to a brazen violation of the intellectual property rights of the
plaintiff, owing to visual, phonetic and structural identity and deceptive
similarity of the impugned mark with the plaintiff no.1‟s registered
trademarks and plaintiff no.2‟s trade name. Thus, the present application has
been filed along with the suit.
3. On behalf of the plaintiffs, the following submissions have been
raised:
3.1 Defendant has not provided any reasonable explanation as to why it
has adopted the mark BIOCHEM. In its reply to the plaintiffs‟ legal notice,
the defendant has claimed that BIOCHEM is a common word in public
domain, over which no one can have exclusivity. However, in its reply to
th
examination report dated 30 September, 2020, the defendant has
categorically stated that the word is unique and forms the part of its
trademark.
3.2 Defendant has sought to contend that BIOCHEM being an
abbreviation of the words Biochemical or Biochemistry, is a generic/
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descriptive word. However, the dictionary words and abbreviation meanings
of Biochemistry and Biochemical make it clear that the abbreviation
BIOCHEM does not by itself mean pharmaceutical products.
3.3 Even if it were to be accepted that BIOCHEM is a dictionary word, it
is well settled that dictionary words and abbreviation can also be protected
as a trademark.
3.4 Plaintiffs‟ trademark BIOCHEM has acquired secondary meaning
through continuous use since 1959.
3.5 Adoption and usage of the mark BIOCHEM by the defendant is
completely dishonest, illegal and mala fide with a view to make monetary
gain out of plaintiffs‟ brand. The brand BIOCHEM is one of the most well
known and recognized pharmaceutical names in India, which fact is well
within the knowledge of the defendant. The defendant has copied the said
registered trademarks of the plaintiffs in order to unlawfully exploit the
enormous goodwill and reputation in the said brand of the plaintiffs.
3.6 The prominent and essential part of the plaintiffs‟ registered
trademark is the word BIOCHEM. Therefore, adoption of the word
BIOCHEM by the defendant amounts to infringement of the plaintiffs‟
trademark.
3.7 The defendant has falsely claimed that its trademark is only ALDER
and not BIOCHEM. This is blatantly false since the manner of use of the
impugned mark by the defendant on its products, its website and Facebook
page, shows that ALDER and BIOCHEM are always written together and in
the same font size. Thus, both ALDER and BIOCHEM are prominent and
essential parts of the defendant‟s mark.
3.8 The defendant‟s contention that there are several companies on the
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Register of Companies having the mark BIOCHEM as part of their
corporate name, is of no relevance. At least thirty companies in the list given
by the defendants are not active, and have been struck off. The defendant
has failed to put on record a single instance of usage of the mark BIOCHEM
by the third parties for pharmaceutical products.
3.9 Defendant is estopped from claiming that the mark is generic, after
having itself applied for registration of the trademark ALDER BIOCHEM.
3.10 Balance of convenience lies in favour of the plaintiff, as no sales
under the infringing mark ALDER BIOCHEM have been made by the
defendant.
4. On the other hand, following submissions have been made on behalf
of the defendant:
4.1 The defendant company was incorporated under the name Alder
Biochem Pvt. Ltd. in and around 2016. The trademark/trade name adopted
and being used by the defendant is ALDER BIOCHEM/ device

4.2 The defendant has adopted sub-brands under the prefix ALDER such
as ALDER Vit-e-400, ALDERKUFF, ALDER NERVIVE, ALDER GEM,
ALDER D3, etc., which show that the primary trademark of the defendant is
the mark ALDER. The word BIOCHEM has been added to denote that the
defendant deals with pharmaceuticals, i.e., chemical products to treat
biological ailments.
4.3 Plaintiffs do not have an exclusive right on the word BIOCHEM.
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Admittedly, the plaintiffs do not have a registration for the word mark
BIOCHEM, per se .
4.4 As per Section 17(2)(a) of the Trade Marks Act, the plaintiffs cannot
claim any exclusive right over the word BIOCHEM by virtue of their
trademark registrations for the device marks of BIOCHEM, as admittedly,
the word BIOCHEM is not the subject of a separate application and is not
separately registered by the proprietor.
4.5 The plaintiffs cannot claim any exclusive right over the word
BIOCHEM by virtue of their device mark registrations, as under Section
17(2)(b) of Trade Marks Act, the word BIOCHEM is common to the trade,
having non-distinctive character.
4.6 The word BIOCHEM is non-distinctive, as it is a commonly used
abbreviation of the words biology and chemistry, which are common words
in the pharmaceutical industry. The use of the word BIOCHEM by the
defendant is as per the honest practice of trade.
4.7 More than 100 companies are using the mark BIOCHEM as part of
their corporate name. There are various third parties registered trademarks
with the word BIOCHEM.
4.8 Establishing that a generic/ non-distinctive word has acquired
secondary meaning, is a matter of evidence.
4.9 The defendant has not applied for registration of the word
BIOCHEM. It has applied for registration of the trademark „ALDER
BIOCHEM‟ as a whole. Hence, it is not estopped from claiming that the
mark BIOCHEM is generic.
4.10 On a bare comparison of the rival marks as whole, it is evident that
there is no similarity between the plaintiffs‟ and the defendant‟s marks. The
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only common element of the marks, in comparison, is the word BIOCHEM,
which is generic and descriptive to the pharmaceutical industry.
4.11 As the two marks are not identical, the likelihood of confusion is not
presumed. On comparing the marks as a whole, it is evident that there is no
similarity between the plaintiffs‟ and defendant‟s mark and there is no
likelihood of confusion.
4.12 The plaintiffs cannot claim exclusivity on the word mark BIOCHEM
in the pharmaceutical industry. In the examination reports issued by the
Trade Marks Registry with respect to the defendant‟s Trademark
Application nos. 4491294 and 4495449, respectively, neither the plaintiffs
mark nor any other BIOCHEM formative marks were cited. Hence, even as
per the Trade Marks Registry there is no exclusive protection granted to the
word BIOCHEM.
4.13 The plaintiff has failed to establish the reputation and goodwill in
their trademark. The use of the trademark BIOCHEM by the plaintiffs is not
standalone, as the said mark is always used by the plaintiffs in form of a
device mark.
4.14 There is no misrepresentation by the defendant which could deceive
the customers.
4.15 There is no likelihood of confusion, as the products of the plaintiffs
and the defendant, are sold under their respective trademarks, and the house
marks

, and ALDER
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BIOCHEM/
, respectively.
5. I have heard learned counsel for the parties and have perused the
record.
6. Perusal of the documents and pleadings on record manifest that the
trademark „BIOCHEM‟ was coined and first adopted by the predecessor-in-
interest of the plaintiff no. 1 in the year 1961. The trademark „BIOCHEM‟ is
being used by plaintiff nos. 1 and 3, on more than 500 of their
pharmaceutical products. Further, the trademark „BIOCHEM‟ forms an
inseparable and essential part of the plaintiff no. 2 company‟s name.
7. The plaintiff no. 1 is the registered proprietor of the device marks
and
under registration nos. 201091 and 560743 in
th nd
Class 5 since 9 March, 1961 and 22 October, 1991, respectively. It is to
be noted that the sales figures of the plaintiff nos. 1 and 3 for their products,
primarily including products bearing the trademark „BIOCHEM‟, crossed
Rs. 160 crores in 2016 and was approximately Rs. 240 crores in 2022.
8. The defendant has subsequently adopted the mark „ALDER
BIOCHEM‟ by adding the prefix ALDER to the registered mark of the
plaintiffs‟ „BIOCHEM‟. The defendant has placed on record the invoices to
show the sale of its products under the impugned name. It is to be noted that
th
the earliest invoice filed by the defendant is dated 16 May, 2022.
Evidently, the plaintiff has established its prior user of the mark
„BIOCHEM‟.
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9. A comparison of the rival marks is reproduced hereunder, for
reference:

10. A side by side comparison of the defendants‟ mark with that of the
plaintiffs‟ mark, makes it evident that the defendant has slavishly imitated
the mark of the plaintiff by adding a prefix ALDER. The prominent and
essential part of the plaintiffs‟ registered device marks „BIOCHEM‟, is the
word „BIOCHEM‟. Thus, it is apparent that the essential features of the
trademark of the plaintiff have been adopted by the defendant, and the mark
adopted by the defendant resembles the plaintiffs‟ mark in a substantial
degree. The plaintiffs having established their first user of the mark
„BIOCHEM‟, the defendant 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.
11. Thus, relying upon the judgments of Supreme Court to hold that the
question whether two competing marks are so similar as to likely to deceive
or cause confusion, is one of first impression and has to be approached from
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the point view of a man of an average intelligence and imperfect
recollection, this Court in the case of Subhash Chand Bansal Versus
Khadim's and Another,2012 SCC OnLine Del 4326 , has held as follows:
“xxx xxx xxx
19. I had the occasion to consider somewhat similar issue
in Greaves Cotton Ltd. v. Mohamamd Rafi [2011 (46) PTC 468
(Del.)]. In that case, the plaintiff was the registered proprietor of
the trademark „GREAVES‟ which was also being used by it as a
part of its corporate name. Defendant no. 1 before this Court had
applied for registration of the trademark “GREAVES INDIA”.
Holding that the plaintiff was entitled to permanent injunction
against use of the impugned mark, this Court, inter alia, held as
under :
“12. It is not necessary that in order to constitute
infringement, the impugned trademark should be an absolute
replica of the registered trademark of the plaintiff. When the
mark of the defendant is not identical to the mark of the plaintiff,
it would be necessary for the plaintiff to establish that the mark
being used by the defendant resembles his mark to such an
extent that it is likely to deceive or cause confusion and that the
user of the impugned trademark is in relation to the goods in
respect of which the plaintiff has obtained registration in his
favour. It will be sufficient if the plaintiff is able to show that
the trademark adopted by the defendant resembles its
trademark in a substantial degree , on account of extensive use
of the main features found in his trademark. In fact, any
intelligent person, seeking to encash upon the goodwill and
reputation of a well-established trademark, would make some
minor changes here and there so as to claim in the event of a
suit or other proceeding, being initiated against him that the
trademark being used by him, does not constitute infringement
of the trademark, ownership of which vests in some other
person. But, such rather minor variations or distinguishing
features would not deprive the plaintiff of injunction in case
resemblance in the two trademarks is found to be substantial,
to the extent that the impugned trademark is found to be
similar to the registered trademark of the plaintiff. But, such
malpractices are not acceptable and such a use cannot be
permitted since this is actuated by a dishonest intention to take
pecuniary advantage of the goodwill and brand image which
the registered mark enjoys, it is also likely to create at least
initial confusion in the mind of a consumer with average
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intelligence and imperfect recollection. It may also result in
giving an unfair advantage to the infringer by creating an
initial interest in the customer, who on account of such
deceptive use of the registered trademark may end up buying
the product of the infringer, though after knowing, either on
account of difference in packaging etc. or on account of use of
prefixes or suffixes that the product which he is buying is not
the product of the plaintiff, but is the product of the defendant.
13. As held by the Supreme Court in Amritdhara
Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, whether a
trade name is likely to deceive or cause confusion by its
resemblance to another mark already registered is a matter of
first impression and the standard of comparison to be adopted
in judging the resemblance is from the point of view of a man
of average intelligence and imperfect recollection. What is
important to keep in mind that the purchaser does not have
both the marks lying side by side for comparison and,
therefore, chances of deception are rather strong.
14. In a case based on infringement of a registered
trademark, the plaintiff need not prove anything more than the
use of its registered trademark by the defendant. In such a
case, even if the defendant is able to show that on account of
use of other words by him in conjunction with the registered
word/mark of the plaintiff, there would be no confusion in the
mind of the customer when he come across the product of the
defendant and/or that on account of the packaging, get up and
the manner of writing trademark on the packaging, it is
possible for the consumer to distinguish his product from that
of the plaintiff, he would still be liable for infringement of the
registered trademark. ”

xxx xxx xxx”
(Emphasis Supplied)
12. There is no doubt that the rival marks are structurally, phonetically
and visually, deceptively and/or confusingly similar to each other.
Confusion is bound to take place as the rival marks are used in respect of
similar goods, i.e., Pharmaceuticals, and the trade channels as well as the
purchasing public/target consumer are likely to overlap. Mere adding of a
prefix by the defendant is inconsequential and will make no difference, as
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the two marks are substantially and deceptively similar to each other. In
fact, the defendant‟s mark wholly subsumes the mark of the plaintiffs. Thus,
in the case of Living Media India Limited and Another Versus Aabtak
Channel. Com (John Does) and Others, 2023 SCC Online Del 5680 , it was
held as follows:
“xxx xxx xxx

(Emphasis Supplied)

13. Clearly, the adoption of the prominent and essential part of the
plaintiffs‟ mark by the defendant, amounts to infringement. Thus, holding
that dominant features are significant because they attract attention and
consumers are more likely to remember and rely on them for purposes of

1
2014 SCC OnLine Del 1953
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identification of the product, this Court in the case of Blue Heaven
Cosmetics Private Limited Versus Deepak Arora and Another , 2022 SCC
Online Del 1001 , has held as follows:
“xxx xxx xxx
25. Respondent No. 1 in the present case has appropriated the word
„Heaven‟ and the blue logo colour from the mark of the Petitioner.
The test of confusion in case of composite marks is well settled in the
case of South India Beverages Pvt. Ltd. v. General Mills Marketing
Inc., (2015) 61 PTC 231 where, while holding that „DAZS‟ is an
essential and dominant feature of the Plaintiff's mark, the Court was
of the opinion that the mark „D'DAAZS‟ was deceptively similar to
Plaintiff's mark „HAAGEN-DAZS‟. The relevant observation of the
Court is as under:
“ 23. It is also settled that while a trademark is supposed to
be looked at in entirety, yet the consideration of a trademark as
a whole does not condone infringement where less than the
entire trademark is appropriated. It is therefore not improper
to identify elements or features of the marks that are more or
less important for purpose of analysis in cases of composite
marks .
24. In this regard we may fortify our conclusion by take note
of the decision reported as 405 F. Supp. 530 (1975) Eaton Allen
Corp. v. Paco Impressions Corp. The facts of the said case
reveal that the plaintiff manufactured coated paper under the
registered trademark „Super-Ko-Rec-Type‟. The defendant
manufactured and advertised a similar product under the mark
„Super Type‟ and „Super Type-7‟. The defendant contended that
the only similarity between the said marks was use of the words
„Super‟ and „Type‟, terms which were neither significant parts
of the plaintiff's registered trademark nor protectable as a
matter of law. The court held that the consideration of a
trademark as a whole does not preclude infringement where
less than the entire trademark is appropriated .
25. Therefore, the submission of the appellant-defendant
predicated upon the principle of „anti-dissection‟ that action for
infringement would not lie since use of the word „D'DAAZS‟
does not result in complete appropriation of the respondent-
plaintiff's mark „HAAGEN DAZS‟, which is to be viewed as an
indivisible whole, is liable to be rejected.
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26. Dominant features are significant because they attract
attention and consumers are more likely to remember and rely
on them for purposes of identification of the product. Usually,
the dominant portion of a mark is that which has the greater
strength or carries more weight. Descriptive or generic
components, having little or no source identifying significance,
are generally less significant in the analysis . However, words
that are arbitrary and distinct possess greater strength and are
thus accorded greater protection.[174 F. Supp. 2d 718, 725
(M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation]”
26. On the issue of likelihood of confusion, J. Thomas McCarthy
th
in McCarthy on Trademarks and Unfair Competition [4 edition,
Vol. 3, page 23-128] opines that the ordinary rule is that marks must
be compared in their entirety, however, more weightage can be given
to the dominant feature of the mark in reaching a conclusion on the
issue of confusion . The relevant observation is as follows-
“ While the basic rule is that marks must be compared in
their entireties and not dissected, in articulating reasons for
reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the
marks in their entireties. Although it is not proper to dissect a
„mark,‟ one feature of a mark may be more significant and it is
proper to give greater force and effect to that dominant
feature. Thus, as a preliminary to comparing marks in their
entireties, it is not improper to downplay the similarity of very
descriptive parts of conflicting marks .”
xxx xxx xxx”
(Emphasis Supplied)

14. Similarly, dealing with a case where the plaintiff was the registered
proprietor of the trademark JAVA and the defendants adopted the mark/logo
JAVA T POINT, by addition of the word T POINT as a suffix, it was held
that the same constituted as infringement. Thus, in the case of Oracle
America Inc. Versus Sonoo Jaiswal and Others, 2024 SCC Online Del
1386 , it was held as follows:
“xxx xxx xxx
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19. The Court has considered the aforenoted submissions. The
Plaintiff is the registered proprietor of the trademark „JAVA‟. The
Defendants' Impugned Mark/Logo „JAVA T
POINT‟/
utilizes the Plaintiffs
trademark entirely, and the same is also part of their domain name
and tradename. Further, they have also incorporated two companies
which utilise „JAVA‟ in their corporate names, i.e. Defendant No.
2/Javatpoint Limited and Defendant No. 3/Javatpoint Tech Private
Limited. In the opinion of the Court, the mere addition of the word
„TPOINT‟ as a suffix to the Plaintiffs trademark „JAVA‟ does not
take away from the fact that „JAVA‟ is the prominent part of the
Defendant's Impugned Mark, which is evidently being used purely
in a trademark sense. Therefore, such use amounts to prima
facie infringement under Section 29(5) of the Act. Moreover, the
Plaintiff Group also has a registration of the trademark „JAVA‟
in, inter alia, Class 41, and are offering the same services as those
offered by the Defendants. Thus, the Defendants' use is also prima
facie infringing under Section 29(1) of the Act .

20. The Court finds the Defendants' argument, positing that „JAVA‟,
being the name of a programming language, is ineligible for
trademark protection, to be without merit. The Defendants' argument
in this regard stems from an article which serves as a piece of
opinionated discourse rather than a definitive scholarly work with
conclusive insights on the matter. The article primarily raises
concerns about the potential for trademark holders to overly police
the use of a language name, thereby impacting free speech and
limiting the language's usage. However, this scenario does not apply
to the current dispute as the Plaintiff has expressly stated its intention
not to enforce the „JAVA‟ trademark in a manner that would unduly
restrict third-party use of the term in its descriptive sense related to
programming. The crux of the Plaintiffs complaint lies not in the
generic use of „JAVA‟ but in its specific application as a trademark by
the Defendants, which is precisely the case here. The law of
trademark protects against the use of a mark in a way that could
cause confusion among consumers regarding the source of goods or
services. Therefore, if „JAVA‟ is being used by the Defendants in a
way that capitalizes on its trademark value established by the
Plaintiff Group, and not merely in reference to the programming
language, then it constitutes infringement . In the present case, the
Court finds that the Defendants' utilization of the Impugned
Mark
as a logo goes beyond
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generically referencing the programming language in a descriptive or
educational context. Instead, it adopts „JAVA‟ in a trademark
capacity, thereby directly infringing upon the Plaintiffs rights over
their registered trademark.

xxx xxx xxx”
(Emphasis Supplied)

15. Clearly, adoption of a prominent part of the registered mark, forming
part of a label mark of another party, is not permissible. Thus, holding that
when a label mark is registered, it cannot be said that the word mark
contained therein is not registered, and emphasizing that the word contained
in the label mark, is also worthy of protection, a Division Bench of this
Court in the case of United Biotech Pvt. Ltd. Versus Orchid Chemicals &
Pharmaceuticals Ltd. & Ors., 2012 SCC OnLine Del 2942 , has held as
follows:
“xxx xxx xxx
26. We find that the learned Single Judge rightly held that when
a label mark is registered, it cannot be said that the word mark
contained therein is not registered . We, thus, are of the opinion that
although the word “ORZID” is a label mark, the word “ORZID”
contained therein is also worthy of protection. The learned Single
Judge has rightly observed that the judgment of the Supreme Court
in Ramdev Food Products Ltd. (supra) is the complete answer. This
aspect is considered and the argument of the appellant is rejected in
the following words:

“27. On whether the OCPL could successfully ask for
rectification for UBPL's word mark FORZID notwithstanding that
OCPL held registration only for a label mark, the judgment of the
Supreme Court in Ramdev Food Products Ltd. v. Arvindbhai
Rambhai Patel, (2006) 8 SCC 726 : AIR 2006 SC 3304 is a complete
answer. The Court there referred to an earlier decision in Registrar
of Trade Marks v. Ashok Chandra Rakhit, AIR 1955 SC 558, which
concerned the proprietory mark „Shree‟ which formed part of the
device as a whole and was an important feature of the device. The
Supreme Court observed that registration of a trade mark as a whole
would give the proprietor “a right to the exclusive use of word
„Shree‟ as if separately and by itself.” Therefore it would not be
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(Emphasis Supplied)

16. Similarly, delving on the aspect of deceptive similarity between two
marks, the Division Bench in the case of United Biotech Pvt. Ltd. (Supra) ,
has held as follows:
“xxx xxx xxx

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consider. No doubt if you find that he did intend to deceive or
cause confusion, you will give him credit for success in his
intentions. You will not hesitate to hold that his use of it is
likely to deceive or cause confusion. But if he had no such
intention, and Was completely honest, then you will look
carefully to see whether it is likely to deceive or cause
confusion before you find him guilty of infringement .

Secondly, „to deceive‟ is one thing. To „cause confusion‟ is
another. The difference is this: when you deceive a man, you
tell him a lie. You make a false representation to him & thereby
cause him to believe a thing to be true which is false. You may
not do it knowingly, or intentionally, but you still do it, & so
you deceive him. But you may cause confusion without telling
him a lie at all, & without making any false representation to
him. You may indeed tell him the truth, the whole truth &
nothing but the truth, but still you may cause confusion in his
mind, not by any fault of yours, but because he has not the
knowledge or ability to distinguish it from the other pieces of
truth known to him or because he may not even take the
trouble to do so .”

31. While examining the question of misrepresentation or
deception, comparison has to be made between the two trademarks
as a whole. Rules of Comparison was explained by Justice Parker
in the following words:

“You must take the two words. You must judge of them, both by
their look & by their sound. You must consider the goods to which
they are to be applied. You must consider the nature & kind of
customer who would be likely to busy those goods. In fact, you
must consider all the surrounding circumstances; and you must
further consider what is likely to happen if each of those
trademarks is used in a normal way as a trademark for the goods
of the respective owners of the marks. If, considering all those
circumstances, you come to the conclusion that there will be
confusion - that is to say, not necessarily that one man will be
injured & the other will gain illicit benefit, but that there will be
confusion in the mind of the public which will lead to confusion in
the goods - then you may refuse the registration, or rather you
must refuse the registration in that case.”

xxx xxx xxx”
(Emphasis Supplied)
17. It is settled law that the rule of dominant feature of a trademark is not
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antithetical to the principle of anti-dissection, as contained in Section 17 of
the Trade Marks Act, and the two Rules work in tandem with each other. In
the present case, 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 the plaintiffs.
18. In the frequently quoted case of Kaviraj Pandit Durga Dutt Sharma
Versus Navaratna Pharmaceuticals Laboratories, 1964 SCC Online SC
14 , Supreme Court has held in categorical terms that where the similarity
between the plaintiff‟s and the defendant‟s mark is so close either visually,
phonetically or otherwise, no further evidence is required to establish that
the plaintiff‟s rights are violated. If the essential features of the trademark of
the plaintiff have been adopted by the defendant, the fact that the getup,
packing and other writing or marks on the goods or on the packets in which
he offers his good for sale, show mark differences, would be immaterial.
When two marks are identical, no further questions arise, for then, the
infringement is made out. Thus, Supreme Court has held as follows:
“xxx xxx xxx
28. The other ground of objection that the findings are inconsistent
really proceeds on an error in appreciating the basic differences
between the causes of action and right to relief in suits for passing off
and for infringement of a registered trade mark and in equating the
essentials of a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark. We have
already pointed out that the suit by the respondent complained both of
an invasion of a statutory right under Section 21 in respect of a
registered trade mark and also of a passing off by the use of the same
mark. The finding in favour of the appellant to which the learned
counsel drew our attention was based upon dissimilarity of the
packing in which the goods of the two parties were vended, the
difference in the physical appearance of the two packets by reason of
the variation in the colour and other features and their general get-up
together with the circumstance that the name and address of the
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manufactory of the appellant was prominently displayed on his
packets and these features were all set out for negativing the
respondent's claim that the appellant had passed off his goods as
those of the respondent. These matters which are of the essence of the
cause of action for relief on the ground of passing off play but a
limited role in an action for infringement of a registered trade mark
by the registered proprietor who has a statutory right to that mark
and who has a statutory remedy for the event of the use by another of
that mark or a colourable imitation thereof. While an action for
passing off is a Common Law remedy being in substance an action
for deceit, that is, a passing off by a person of his own goods as
those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication
of the exclusive right to the use of the trade mark in relation to those
goods ” (Vide Section 21 of the Act). The use by the defendant of the
trade mark of the plaintiff is not essential in an action for passing off,
but is the sine qua non in the case of an action for infringement. No
doubt, where the evidence in respect of passing off consists merely of
the colourable use of a registered trade mark, the essential features of
both the actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action would
also be such in an action for infringement of the same trade mark. But
there the correspondence between the two ceases. In an action for
infringement, the plaintiff must, no doubt, make out that the use of
the defendant's mark is likely to deceive, but where the similarity
between the plaintiff's and the defendant's mark is so close either
visually, phonetically or otherwise and the court reaches the
conclusion that there is an imitation, no further evidence is required
to establish that the plaintiff's rights are violated. Expressed in
another way, if the essential features of the trade mark of the
plaintiff have been adopted by the defendant, the fact that the get-
up, packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from that of
the registered proprietor of the mark would be immaterial ; whereas
in the case of passing off, the defendant may escape liability if he can
show that the added matter is sufficient to distinguish his goods from
those of the plaintiff.

29. When once the use by the defendant of the mark which is
claimed to infringe the plaintiff's mark is shown to be “in the course
of trade”, the question whether there has been an infringement is to
be decided by comparison of the two marks. Where the two marks
are identical no further questions arise; for then the infringement is
made out . When the two marks are not identical, the plaintiff would
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have to establish that the mark used by the defendant so nearly
resembles the plaintiff's registered trade mark as is likely to deceive
or cause confusion and in relation to goods in respect of which it is
registered (Vide Section 21). A point has sometimes been raised as to
whether the words “or cause confusion” introduce any element which
is not already covered by the words “likely to deceive” and it has
sometimes been answered by saying that it is merely an extension of
the earlier test and does not add very materially to the concept
indicated by the earlier words “likely to deceive”. But this apart, as
the question arises in an action for infringement the onus would be on
the plaintiff to establish that the trade mark used by the defendant in
the course of trade in the goods in respect of which his mark is
registered, is deceptively similar. This has necessarily to be
ascertained by a comparison of the two marks — the degree of
resemblance which is necessary to exist to cause deception not being
capable of definition by laying down objective standards. The persons
who would be deceived are, of course, the purchasers of the goods
and it is the likelihood of their being deceived that is the subject of
consideration. The resemblance may be phonetic, visual or in the
basic idea represented by the plaintiff's mark. The purpose of the
comparison is for determining whether the essential features of the
plaintiff's trade mark are to be found in that used by the defendant.
The identification of the essential features of the mark is in essence a
question of fact and depends on the judgment of the Court based on
the evidence led before it as regards the usage of the trade. It should,
however, be borne in mind that the object of the enquiry in ultimate
analysis is whether the mark used by the defendant as a whole is
deceptively similar to that of the registered mark of the plaintiff.

xxx xxx xxx”
(Emphasis Supplied)

19. This Court also notes the submission of the plaintiffs that the
plaintiffs‟ mark „BIOCHEM‟ has been protected by the Bombay High Court
in proceedings instituted previously by their predecessors-in-interest, as also
by the Trade Marks Registry in a number of opposition proceedings
instituted by the plaintiffs‟ predecessors-in-interest. The submissions made
in this regard, as given in the plaint, read as under:
“xxx xxx xxx
29. It is stated that the Plaintiffs and their predecessors-in-interest
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have been highly vigilant in protecting their statutory and common
law rights over the trade mark BIOCHEM and its labels, and have
initiated actions against third parties for violation of their rights in
the trade mark BIOCHEM. The Plaintiffs' trade mark BIOCHEM has
been protected by the Hon'ble Bombay High Court in proceedings
instituted previously by their predecessors-in-interest. The
predecessors-in-interest of the Plaintiffs had filed a suit seeking
permanent injunction before the Hon'ble Bombay Court, restraining
the use of trade mark BIOCHEM by an infringer. The suit along with
its current status has been listed hereunder:



The aforesaid order passed by the Hon'ble Court protecting the
registered trade marks of the Plaintiffs is being filed along with the
present proceedings.

30. It is stated that the Plaintiffs' trade mark BIOCHEM has been
protected by the Trade Marks Registry in a number of opposition
proceedings instituted previously by their predecessors-in-interest, the
details of which have been listed hereunder:

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xxx xxx xxx”

20. This court also notes the submissions made by the plaintiffs that the
defendant‟s trademark application no. 4491294 for the word mark „ALDER
BIOCHEM‟ has been objected by the Trade Mark Registry. Further, qua the
defendant‟s trademark application no. 4495449 for the device mark,
, the plaintiff has already filed a notice of opposition
against it.
21. The defendant has contended that the word BIOCHEM is generic and
non-distinctive, as it is commonly used abbreviation of the word biology and
chemistry, which are common words in the pharmaceutical industry. It is
further the case of the defendant that the word BIOCHEM is common to the
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trade. All these issues, as raised by the defendant, cannot be adjudicated at
this stage, as the same are a matter of evidence, which 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. This Court is in
agreement with the submissions of the plaintiffs 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.

22. Holding that there is distinction between a mark being „common on
the register‟ and „common to the trade‟ and trademark being property right,
an invasion of it should be protected, and balance of convenience would
obviously be in favour of a party who was the first user of the mark, this
Court in the case of Century Traders Versus Roshan Lal Duggar & Co.,
1977 SCC OnLine Del 50 , has held as follows:
“xxx xxx xxx

11. In Consolidated Foods Corporation v. Brandon and Co., Private
Ltd., A.I.R. 1965 Bombay 35 (2), it was observed that “ A trader
acquires a right of property, in a distinctive mark merely by using it
upon or in connection with his goods irrespective of the length of
such user and the extent of his trade. The trader who adopts such a
mark is entitled to protection directly the article having assumed a
vendible character is launched upon the market. Registration under
the statute does not confer any new right to the mark claimed or any
greater rights than what already existed at common law and at
equity without registration . It does, however, facilitate a remedy
which may be enforced and obtained throughout the State and it
established the record of facts affecting the right to the mark.
Registration itself does not create a trade mark. The trade mark exists
independently of the registration which merely affords further
protection under the Statute. Common law rights are left wholly
unaffected. Priority in adoption and use of a trade mark is superior to
priority in registration.

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xxx xxx xxx

14. Thus, the law is pretty well-settled that in order to succeed at this
stage the appellant had to establish user of the aforesaid mark prior
in point of time than the impugned user by the respondents . The
registration of the said mark or similar mark prior in point of time to
user by the appellant is irrelevant in an action passing off and the
mere presence of the mark in the register maintained by the trade
mark registry did not prove its user by the persons in whose names the
mark was registered and was irrelevant for the purposes of deciding
the application for interim injunction unless evidence had been led or
was available of user of the registered trademarks. In our opinion,
these clear rules of law were not kept in view by the learned Single
Judge and led him to commit an error.

xxx xxx xxx

21. We now come to the question of balance of convenience. It has
been urged on behalf of the respondents that the mark “RAJARANI”
is common to the trade and for this purpose reliance has been placed
on the registration in Andhra Pradesh and Amritsar. There is a
distinction between a mark being “common on the register” and
“common to the trade”. There is no evidence on record to show that
there is actual user of this mark by any party other than the parties
before us. Inasmuch as trade mark is property right, an invasion of
it should be protected and the balance of convenience would
obviously be in favour of the appellant who was admittedly the first
user of this mark . We cannot accept that there is any prima facie
evidence of respondent No. 3 being the owner of the mark. Indeed, this
is belied by the registration applications filed by respondent No. 2. As
was observed by Goddard, L.J. in Draper v. Trist, 1939 (3) A.E.R. 513
(8):—

“In passing off cases, however, the true basis of the action is
that the passing off by the defendant of his goods as the goods
of the plaintiff injures the right of property in the plaintiff, that
right of property being his right to the goodwill of his
business……”.

This right is to be protected and the balance of convenience is in
favour of the person who has established a prime facie right to
property.

xxx xxx xxx”

(Emphasis Supplied)

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23. On the aspect whether a word mark is common to the trade, it has
been held that to establish a plea of common use, the use by other persons
should be shown to be substantial and a party is not expected to sue all small
type infringers, who may not be affecting such party‟s business. Thus, a
Division Bench of this Court in the case of Pankaj Goel Versus Dabur
India Ltd. , 2008 SCC OnLine Del 1744 , has held as follows:
“xxx xxx xxx
21. As far as the Appellant's argument that the word MOLA is
common to the trade and that variants of MOLA are available in the
market, we find that the Appellant has not been able to prima
facie prove that the said „infringers‟ had significant business
turnover or they posed a threat to Plaintiff's distinctiveness. In fact,
we are of the view that the Respondent/Plaintiff is not expected to
sue all small type infringers who may not be affecting
Respondent/Plaintiff business . The Supreme Court in National
Bell v. Metal Goods, (1970) 3 SCC 665 : AIR 1971 SC 898 has held
that a proprietor of a trademark need not take action against
infringement which do not cause prejudice to its distinctiveness.
In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., (1989) 7 PTC 14
it has been held as under :—
“…. To establish the plea of common use, the use by other
persons should be shown to be substantial. In the present
case, there is no evidence regarding the extent of the trade
carried on by the alleged infringers or their respective
position in the trade. If the proprietor of the mark is expected
to pursue each and every insignificant infringer to save his
mark, the business will come to a standstill. Because there
may be occasion when the malicious persons, just to harass
the proprietor may use his mark by way of pinpricks…. The
mere use of the name is irrelevant because a registered
proprietor is not expected to go on filing suits or proceedings
against infringers who are of no consequence… Mere delay
in taking action against the infringers is not sufficient to hold
that the registered proprietor has lost the mark intentionally
unless it is positively proved that delay was due to intentional
abandonment of the right over the registered mark. This Court
is inclined to accept the submissions of the respondent No. 1
on this point… The respondent No. 1 did not lose its mark by
not proceeding against insignificant infringers…”
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22. In fact, in Dr. Reddy Laboratories v. Reddy
Paharmaceuticals, (2004) 29 PTC 435 a Single Judge of this Court
has held as under :—
“… the owners of trade marks or copy rights are not expected
to run after every infringer and thereby remain involved in
litigation at the cost of their business time. If the impugned
infringement is too trivial or insignificant and is not capable
of harming their business interests, they may overlook and
ignore petty violations till they assume alarming proportions.
If a road side Dhaba puts up a board of “Taj Hotel”, the
owners of Taj Group are not expected to swing into action
and raise objections forthwith. They can wait till the time the
user of their name starts harming their business interest and
starts misleading and confusing their customers .”
23 ………..
24. In fact, in Castrol Limited v. A.K. Mehta, (1997) 17 PTC 408 (DB)
it has been held that a concession given in one case does not mean
that other parties are entitled to use the same. Also in Prakash
Roadline v. Prakash Parcel Service, (1992) 2 Arb LR 174 it has been
held that use of a similar mark by a third party in violation of
Plaintiff's right is no defence .
xxx xxx xxx”
(Emphasis Supplied)

24. Having regard to the aforesaid discussion, the case laws cited by the
defendant, have no applicability to the facts of the present case.
25. In view of the aforesaid, the plaintiffs have established a prima facie
case in their favour. There is presumption of validity of the plaintiffs‟
registered trademark. The prominent, essential and dominant feature of the
plaintiffs‟ mark is the word BIOCHEM, which is being used by the
defendant for identical goods, i.e., Pharmaceuticals products. Further, the
balance of convenience also lies in favour of the plaintiffs. The plaintiffs
have filed on record documents pertaining to their sales figures of their
products under the mark BIOCHEM, which is more than two hundred crores
in the year 2022. In contrast, the defendant‟s sale of products under the
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impugned mark „ALDER BIOCHEM‟, were to the tune of Rs. 21 lacs, in
2022-2023 and Rs. 38 lacs, in 2023-2024. Further, irreparable injury and
loss will be caused to the plaintiffs if the defendant is not injucted. Law is
settled that confusion between medical products is life threatening, not
merely inconvenient. Further, the damage to a parties‟ reputation and
goodwill as a result of acts of infringement and passing off, cannot be
compensated in cases relating to pharmaceutical, by damages alone.
26. Accordingly, the defendant, its principal officers, assignees, family
members, servants and agents, and all other persons claiming under the
defendant, are restrained from selling, offering for sale, advertising and/or
promoting and/or using the mark/trade name,
„ALDER
BIOCHEM‟ and any other mark/trade name/label/device that contains the
mark „BIOCHEM‟ and any other mark/name/label/device that is deceptively
similar to the plaintiffs‟ mark/trade name
and

„BIOCHEM‟.
27. Further, the defendant and all other persons claiming under the
defendant, are also restrained from using the domain name
www.alderbiochem.com or any other domain name that contains any mark
identical or deceptively similar to the plaintiffs‟ mark/label
and
„BIOCHEM‟.
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28. It is clarified that any observations contained herein are only for the
purpose of disposing of the present application seeking interim directions,
and would have no bearing on the merits of the case, at the time of final
hearing of the case. Nothing contained herein shall be construed as an
expression on the merits of the case.
29. The present application is accordingly disposed of, in terms of the
aforesaid directions.

(MINI PUSHKARNA)
JUDGE
NOVEMBER 13, 2024
c/ak
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