Trademark infringement occurs when a mark is nearly identical to a registered mark, leading to consumer confusion, especially when the defendant fails to contest the claims.

JUDGMENT :

AMIT BANSAL, J.

1. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the trademark and passing off their goods and services as that of the plaintiff and other ancillary reliefs.

PLEADINGS IN THE PLAINT

2. The plaintiff i.e., ‘ASTELLAS PHARMA INC.’ is a multinational corporation organised and existing under the laws of Japan, engaged in the business of pharmaceutical products since the year 2004.

3. The plaintiff is the registered proprietor of the mark ‘ASTELLAS’ bearing registration no. 1319069 in class 5. Furthermore, the plaintiff has several registrations, few of which are asserted in the present suit and are enlisted below:

4. The plaintiff has an exclusive presence in India, through its subsidiary Astellas Pharma India Private Limited, incorporated as early as 2008, engaged in developing sales and marketing of in-house products.

5. The plaintiff adopted the mark ‘ASTELLAS’/‘ ’and applied for the registration for the mark ‘ASTELLAS’/ in Class 5 bearing no.1319069 for goods being ‘Pharmaceutical preparations, veterinary and sanitary preparations, oiled paper for medical purposes, sanitary masks, pharmaceutical wafer, gauze for dressings, empty capsules for pharmaceuticals, eye patches, ear bandages, menstruation bandages, menstruation tampons, sanitary napkins, sanitary panties, absorbent cotton, adhesive plasters, bandages for dressings, collodion, breast-nursing pads, dental materials, bracelets for medical purposes, incontinence diapers, fly catching paper, mothproofing paper, lactose (milk sugar), powder milk for babies, semen for artificial insemination’..

6. The plaintiff’s Mark ‘ASTELLAS’ was entered into the Trade Marks Register on 31^st May, 2017 with effect from 4^th November, 2004. The said mark is valid and subsisting.

7. The plaintiff has amassed immense goodwill and reputation which can be validated by their global sales revenue in the fiscal year 2022-23 amounting to 1,518.6 billion Japanese Yen [paragraph 12 of the plaint]. Furthermore, the plaintiff has also provided their annual consolidated turnover figures from the years 2009-2023 in relation to the products and services of the plaintiff in India. The consolidated turnover figures in relation to the products and services of the plaintiff in India have been provided in paragraph 29 of the plaint. It is noted that in the year 2022-23, the plaintiff’s turnover in India was Rs. 29,50,74,144/-.

8. In and around December, 2022, it came to the knowledge of the plaintiff that a nearly identical trademark application in the name of ‘Astellaz Pharmaceuticals’ in Class 35 was advertised in the Trade Mark Journal No. 2066 for “trading of medicine” (hereinafter ‘impugned application’). The defendant has applied for an identical / deceptively similar mark in respect of the identical/highly similar goods and services. Furthermore, the defendant had also adopted the impugned device of a star with similar inscriptions making it a slavish imitation of the plaintiff’s device.

9. The plaintiff filed their Notice of Opposition on 6^th December 2022 against the defendant’s impugned application for the impugned device mark ‘ ’.

10. Subsequently, the plaintiff also sent a cease-and-desist letter dated 6^th December, 2022 for infringement and passing off the plaintiff’s Marks and the same was delivered. As there was no response to the said legal notice, the plaintiff issued a reminder notice dated 20^th August, 2021 to the defendant and the same was also delivered.

11. Without issuing a reply to the plaintiff’s cease-and-desist letter, the defendant filed its counter statement on 4^th January, 2023 wherein the defendant had raised false and frivolous grounds without any cogent evidence.

12. Furthermore, in the midst of the ongoing opposition proceeding between the competing parties, in March 2023, the plaintiff was shocked to come across the following domain name of the defendant - www.astellaz.com. Upon conducting an intern