Summary
In the case of Alder Biochem Private Limited v. Zydus Healthcare Limited & Ors., the Delhi High Court considered whether Zydus could restrain Alder from using ALDER BIOCHEM when Alder claimed that BIOCHEM was descriptive, non distinctive and common to the pharmaceutical trade. The Court considered Zydus's registration and long use of BIOCHEM, Alder's later adoption of ALDER BIOCHEM, the evidence of third party use, and the fact that Zydus owned a device mark rather than a word mark. At the interim stage, the Court found no reason to interfere with the injunction against Alder.
Background
Trademark Infringement Dispute
This case relates to the mark BIOCHEM, which Zydus used in relation to pharmaceutical products. Zydus traced the adoption of BIOCHEM to 1959 and relied on a trademark registration dating back to 1961. BIOCHEM was registered as a device mark. Following corporate changes and an amalgamation in 2017, the rights in the mark came to Zydus Healthcare.
Alder entered the picture much later. Alder Biochem Private Limited was incorporated around 2016. It registered the domain name alderbiochem.com in 2018 and adopted ALDER BIOCHEM in 2019 for pharmaceutical and nutraceutical products. It also applied for registration of ALDER BIOCHEM in Class 5 in 2020.
The dispute between the parties started when Zydus objected to Alder’s use of ALDER BIOCHEM. Zydus issued a cease and desist notice in May 2022, claiming that Alder had taken its BIOCHEM mark in full. Alder denied infringement and continued to assert rights over ALDER BIOCHEM. Zydus also opposed Alder’s trademark application.
The disagreement soon moved to court. Zydus filed a suit for infringement and passing off and asked the Delhi High Court to stop Alder from using ALDER BIOCHEM. An interim injunction followed, restraining Alder from using ALDER BIOCHEM, BIOCHEM as part of another mark or trade name, and the domain name containing BIOCHEM. The Single Judge later confirmed the injunction.
Alder appealed against that order.
In the appeal, Alder’s case went beyond saying that ALDER BIOCHEM was different from BIOCHEM. Alder questioned the very basis of Zydus’s claim over BIOCHEM. It argued that BIOCHEM was nothing more than a commonly understood abbreviation or combination of biology, chemistry, biochemical and biochemistry. In a pharmaceutical business, Alder said, such a word was descriptive and could not be reserved for one trader.
That argument led to the principal question before the Division Bench: could Zydus enforce BIOCHEM against Alder despite the plea that the word was descriptive and non distinctive?
Questions Before the Court
- Whether Zydus could enforce BIOCHEM when Alder claimed that the word was descriptive and non distinctive for pharmaceutical products.
- Whether Zydus’s long use of BIOCHEM supported a claim of acquired distinctiveness at the interim stage.
- Whether the companies and trademarks cited by Alder established that BIOCHEM was common to trade.
- Whether Zydus could claim protection for BIOCHEM when its registration was for a device mark and not for BIOCHEM as a word mark.
- Whether adding ALDER before BIOCHEM sufficiently distinguished ALDER BIOCHEM from Zydus’s mark.
Arguments Presented By the Parties
Alder
Alder challenged Zydus’s case on several connected grounds:
- BIOCHEM was an abbreviation or combination of biology and chemistry and was also used for biochemical and biochemistry. It was therefore descriptive and non distinctive in the pharmaceutical field.
- Around 100 entities used BIOCHEM as part of their corporate names, and several registered trademarks also contained BIOCHEM. Alder relied on this material to argue that the expression was common to trade.
- Zydus had registered BIOCHEM only as a device mark. Alder relied on Section 17 of the Trade Marks Act, 1999 to contend that registration gave Zydus rights in the mark as a whole and not an independent monopoly over the word BIOCHEM.
- If Zydus wished to rely on acquired distinctiveness or secondary meaning, it had to prove the same through evidence at trial. Sales figures alone, according to Alder, could not establish secondary meaning.
- ALDER was the distinctive part of ALDER BIOCHEM. The marks had to be compared as a whole, and the presence of ALDER distinguished its mark from Zydus’s device mark.
Zydus
Zydus answered Alder by relying on the history and legal status of BIOCHEM:
- BIOCHEM had remained registered for several decades and therefore enjoyed the presumption of validity under Section 31 of the Trade Marks Act.
- Zydus and its predecessors had used BIOCHEM long before Alder came into existence. Zydus also placed substantial sales figures before the Court to support its claim of long commercial use.
- The list of other BIOCHEM entities did not establish that the word was common to the pharmaceutical trade. Many of those entities dealt with fertilizers, metals, chemicals and other products, and some no longer existed.
- Mere registration of other BIOCHEM marks did not prove actual or substantial use in the market.
- BIOCHEM was the only word in Zydus’s registered device mark. Alder had reproduced that word completely in ALDER BIOCHEM, and the addition of ALDER did not remove the likelihood of confusion.
Court’s Analysis of BIOCHEM
The Court first looked at who came first.
Zydus relied on a history of BIOCHEM going back several decades, while Alder had been incorporated only in 2016 and adopted ALDER BIOCHEM later. The Court observed that there was no real dispute over Zydus’s prior use. This gave the Court the starting point for considering Alder’s challenge to the mark.
The next question was whether Alder could avoid the injunction simply by describing BIOCHEM as non distinctive.
The Court noted that BIOCHEM remained a registered trademark. Alder had raised objections to its distinctiveness, but had not brought substantive proceedings challenging the validity of the registration. As long as the registration stood, Section 31 gave it a presumption of validity at the prima facie stage.
The Court then considered Zydus’s alternative case of acquired distinctiveness. It agreed that whether BIOCHEM had acquired distinctiveness would ultimately require evidence and could be finally decided only at trial. But the Court was dealing with an interim injunction. For that purpose, it took note of the use of BIOCHEM since the 1960s and the material showing annual turnover of approximately Rs. 200 crores. In the Court’s view, this material supported Zydus at that stage.
Alder’s plea that BIOCHEM was common to trade met a different difficulty.
Alder had produced a long list of entities and trademarks containing BIOCHEM. The Court did not treat the number of names on that list as sufficient by itself. It considered what those businesses actually did. Many dealt with fertilizers, metals and chemicals rather than pharmaceutical products. The Court also noted the absence of evidence showing substantial actual use of BIOCHEM by third parties for pharmaceuticals.
Mere entries on the trademark register did not establish commercial use. The Court therefore found Alder’s material insufficient, prima facie, to show that BIOCHEM had become common to the pharmaceutical trade.
The Court next dealt with Alder’s Section 17 argument. Alder had placed considerable reliance on the fact that Zydus owned a device registration and not a separate word mark for BIOCHEM.
The Court found that argument unpersuasive in the circumstances of this case. BIOCHEM was the only word forming part of Zydus’s device mark. The case did not involve several verbal elements from which Zydus had selected one part and sought separate protection. The Court therefore did not accept that Section 17 prevented Zydus from relying on BIOCHEM merely because the registration was in device form.
This brought the Court to the actual comparison of the marks.
Alder’s mark was ALDER BIOCHEM. Zydus’s mark contained BIOCHEM as its only word. Alder had therefore incorporated BIOCHEM in full and added ALDER before it.
According to the Court, that addition did not sufficiently answer the similarity. It considered BIOCHEM to have recall value among consumers of pharmaceutical products and found that its complete incorporation into ALDER BIOCHEM could cause confusion.
The fact that both parties dealt with pharmaceutical products strengthened the Court’s concern. The Court referred to the greater degree of care required in pharmaceutical trademark disputes because confusion between medicinal products could have serious consequences.
Viewed together, Zydus’s prior use, subsisting registration, evidence of long commercial use, lack of sufficient proof of substantial third party pharmaceutical use, and Alder’s complete adoption of BIOCHEM persuaded the Court not to disturb the injunction.
The Court nevertheless kept its decision within the limits of an interim proceeding. It did not finally decide that BIOCHEM was inherently distinctive or that Alder could never establish its descriptiveness or common use arguments. Those questions remained open for trial.
Findings
The findings of the Court are as follows:
- Zydus was the prior user of BIOCHEM and Alder’s use came several decades later.
- BIOCHEM continued to enjoy the statutory presumption of validity arising from its registration.
- Acquired distinctiveness remained a matter for evidence at trial, but Zydus’s long use and commercial material supported its case at the interim stage.
- Alder did not establish substantial third party use of BIOCHEM for pharmaceutical products merely by producing corporate names and trademark registrations.
- Section 17 did not defeat Zydus’s case because BIOCHEM was the only verbal element in its registered device mark.
- ALDER BIOCHEM incorporated BIOCHEM completely, and the addition of ALDER did not sufficiently remove the likelihood of confusion at the interim stage.
- The appeal was dismissed and the injunction granted against Alder continued.
- All observations remained prima facie and subject to final adjudication of the suit.
Relevant Paras
Paragraph 27
“Second issue, relates to the presumption of validity that registration confers under Section 31 (1) of TM Act. There is no substantive challenge to the validity of the mark, nor has any proceeding being instituted by the appellant/defendant challenging its ‘distinctiveness’ under Section 9 of the TM Act. Even otherwise, the plea of respondent/plaintiff that the mark has acquired ‘distinctiveness’ in character and would be entitled for protection under Section 32 of TM Act, is be a matter of evidence. Prima facie, considering the use of the mark since 1960s, and an annual turnover of approximately Rs.200 crores, the balance of convenience would tilt in favour of respondent/plaintiff on this aspect.”
Paragraph 35
“As regards the other companies using ‘BIOCHEM’ as part of their trade names, the submissions advanced by the Senior Counsel for respondent, as noticed in paragraphs19.16 and 19.17 of the impugned judgement, are noted by this Court. Prima facie, these submissions sufficiently dilute the argument advanced on behalf of the appellant/defendant regarding extensive third-party use of the word ‘BIOCHEM’, since most of those entities appear to be dealing with fertilizers, metals and other chemical products.”
Paragraph 40(ii)
“As regards the application of Section 17 of TM Act, considering that the respondent/plaintiff’s mark does not comprise separable components, appellant/defendant’s contention that ‘BIOCHEM’ is merely one part of the registered device mark and not an independently registered word mark is untenable. Even a bare comparison of ‘ALDER BIOCHEM’ with ‘BIOCHEM’ demonstrates that appellant/defendant’s mark wholly subsumes the only and dominant element of the respondent/plaintiff’s mark, namely ‘BIOCHEM’. Consequently, the mere addition of the prefix ‘ALDER’ does not, prima facie, assist appellant/defendant.”
Paragraph 40(v)
“Respondent/plaintiff has further contended that ‘BIOCHEM’ is not descriptive of pharmaceutical products but is a portmanteau derived from the words ‘bio’ and ‘chemistry’, which has acquired distinctiveness and functions as a source identifier. Section 9(1) of the TM Act recognizes an exception in favour of marks that have acquired distinctiveness through long and extensive use. Prima facie, this submission deserves acceptance, since the respondent/plaintiff has placed on record material demonstrating use of the mark since the 1960s, whereas there is no evidence of use of the appellant/defendant’s mark prior to 2016.”
Paragraphs 41 to 43
“41. In light of above discussion, this Court finds no reason to interfere with the decision passed by the Single Judge or with the injunction granted thereby.”
“42. Therefore, the appeal is accordingly dismissed, and the directions passed by the Single Judge shall continue to remain in force.”
“43. The observations made herein while considering the present appeal are purely prima facie in nature and shall remain subject to final adjudication of the suit.”
Case Citation
Bluebook style: Alder Biochem Priv. Ltd. v. Zydus Healthcare Ltd. & Ors., FAO(OS) (COMM) 268/2024 (Delhi High Ct. Aug. 10, 2026), https://indiankanoon.org/doc/194360197/ (last visited Aug. 19, 2026).
Accessible link: Indian Kanoon judgment – Alder Biochem v. Zydus Healthcare
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog based on user inputs and prompts. Views are personal.