Zydus Healthcare Ltd. (“Zydus”) and Alder Biochem Pvt. Ltd. (“Alder”) are at loggerheads over the mark BIOCHEM. Zydus brought trademark infringement and passing-off lawsuit against Alder’s use of the mark ALDER BIOCHEM as its trade name. Zydus alleged that a) Alder’s use violated its intellectual property rights over the trademark BIOCHEM b) Alder’s adoption of ALDER BIOCHEM was deceptively similar to its longstanding trademark, constituting infringement and posing a risk of confusion among consumers.

Background of the case

1. Zydus claims to be the registered proprietor of the trademark BIOCHEM, originally coined and first used in 1959 by Biochem Pharmaceutical Industries.
2. Following an amalgamation in 2004, the rights to the BIOCHEM trademark were transferred to Zydus, which continues to use it extensively on its pharmaceutical products.
3. In 2022, Zydus discovered that Alder had applied for registration of the mark ALDER BIOCHEM in Class 5 for pharmaceutical goods, claiming use since 2019.
4. Alder later filed another application for a device mark in the same class. Zydus opposed both applications before the Trademarks Registry and issued a cease-and-desist notice, which Alder refuted, claiming prior use of BIOCHEM since 2016.

Key Contentions of the Parties

Zydus contended:

1. That they have prior and extensive use of the BIOCHEM mark , which has been in use since 1959 and is registered since 1961.
2. They contend that Alder’s use of amounts to trademark infringement and passing off, as the term BIOCHEM is central and distinctive to Zydus’s branding.
3. Zydus argued that BIOCHEM has acquired secondary meaning, representing their products’ source, quality, and reputation over the years.
4. The assertion by Alder that BIOCHEM is a generic term was countered with the argument that it is protectable as a trademark in the context of pharmaceuticals.

Alder’s Contentions:

1. Alder claimed that BIOCHEM is a descriptive and generic abbreviation for “biochemistry” and therefore cannot be monopolized as a trademark.
2. That its primary trademark is ALDER, with BIOCHEM used descriptively to indicate its pharmaceutical focus.
3. Alder pointed to the absence of evidence by Zydus to show that BIOCHEM has acquired secondary meaning or exclusivity in the trade.
4. That the addition of ALDER as a prefix created a distinctive mark, eliminating any likelihood of confusion.

Findings of the Court

The Court found merit in Zydus’s arguments and concluded that.

1. Prior Use and Registration: Zydus demonstrated longstanding use and prior registration of the BIOCHEM mark. Evidence indicated Alder’s first use of ALDER BIOCHEM only in 2022, undermining its claim of earlier use.
2. Dominant Features: The Court held that the dominant and essential part of Zydus’s trademark is the word BIOCHEM. The addition of the prefix ALDER did not eliminate the deceptive similarity, particularly in the pharmaceutical context.
3. Likelihood of Confusion: Given the identical nature of the goods and the life-threatening consequences of consumer confusion in the pharmaceutical industry, the Court determined that Alder’s use of ALDER BIOCHEM posed a substantial risk.
4. Generic Argument: Alder’s contention that BIOCHEM is generic and descriptive word was rejected. The court held that such claims require evidence and are best resolved at trial.
5. Bad Faith Adoption: The Court noted the lack of evidence from Alder to substantiate claims of third-party use of BIOCHEM. Alder’s adoption of the mark appeared to lack good faith.

Court’s Decision

The Delhi High Court allowed Zydus’s injunction application, prohibiting Alder from:

1. Using the mark ALDER BIOCHEM or any name incorporating BIOCHEM or deceptively similar variations.
2. Operating the domain name www.alderbiochem.com or any domain name resembling the trademark BIOCHEM.

Comment

The Court emphasized that dictionary words and abbreviation can also be protected as a trademark.