Transborder reputation can establish passing off claims without actual sales in India, prioritizing prior user and goodwill spilling over into the Indian market.

O R A L O R D E R :

1. By this Interim Application, the Applicant / Plaintiff is seeking an order of injunction restraining Defendant No. 1 by itself and through its affiliates, directors, employees, agents, distributors, retailers, dealers, manufacturers, stockists and / or otherwise from using in any manner the impugned trademarks 'Daiwa Pharmaceuticals Pvt. Ltd', 'Daiwa Pharma', and / or ‘ ’ and / or impugned domain name and/or any other word or mark, device or expression or symbol which is/are identical with and / or deceptively and/or confusingly similar to, in any manner whatsoever, the Applicant's said mark 'DAIWA', or the Applicant's other marks comprising DAIWA as their essential and prominent feature as so to pass-off its impugned identical and/or similar goods i.e. pharmaceuticals and medicinal preparations as and for that of the Applicant.

2. Further, ancillary relief is sought including in prayer Clause (d) which is to restrain Defendant No.1 from offering goods through the impugned domain name and from transferring or alienating in any manner dealing with the impugned domain name.

It would be necessary to refer to relevant facts which have led to be filing of the above Suit. These facts are as under:-

3. The Plaintiff Company was incorporated on 6th February, 1990 under the laws of Japan and commenced its business under the corporate name ‘Daiwa Pharmaceutical Co. Ltd.’

4. In the year 1992, the Plaintiff developed a new technology for functional foods and established extraction technology of a new physiologically active substance called MGN-3 (Rice Bran), which is now distributed under the sub-brand BioBran and Lentin Plus across 55 countries worldwide under the house mark ‘Daiwa’.

5. From the year 1996 till present, the Plaintiff had been conducted seminars and workshops in the United States, UK, Europe, Asia, Middle East etc. to create awareness of its products, which was attended by several health practitioners from India.

6. Further, from the year 1997 till 2022, the Plaintiff secured registration of the trademark ‘Daiwa’ and ‘Daiwa Pharmaceutical’ in various countries.

7. On 1st March, 2000 the Plaintiff registered its domain name www.daiwa-pharm.com’

8. In India, the Plaintiff applied for registration of its product name ‘NKCP’ bearing application number 1359518 in Class 5 on 25th May, 2005. The same has been registered in the name of the Plaintiff.

9. On 27th April, 2006, the Plaintiff appointed Elder Pharmaceuticals Ltd. as exclusive distributor of BioBran and NKCP through Elder Agreement in India, SriLanka, Nepal and Bangladesh. Furthermore, the products sold by Elder packaging always featured ‘under license from Daiwa Pharmaceutical Co. Ltd.’

10. From 2006 till 2013, Elder Pharmaceuticals regularly placed orders, imported product from the Plaintiff and distributed the same in India pursuant to the Distribution Agreement.

11. The Plaintiff has received and continues to receive several inquiries from India inter alia from prospective distributors as well as end consumers qua the Plaintiff’s product.

12. The Plaintiff has also inter alia entered into Confidentiality Agreements with several Indian entities which have been relied upon and exhibited at AA1 – AA7 to the Plaint.

13. The case of the Defendant No.1’s is that in the year 2017 Mr. Bharatha Nageshwararao, Director of Defendant No.1 consulted spiritual guru Mr. R Narasimha Murthy who advised to adopt the name ‘Daiwa’.

14. Defendant No.1 was incorporated on 5th December, 2017 as a company with the impugned corporate name ‘Daiwa Pharmaceuticals Pvt. Ltd.’ which was identical to that of the Plaintiff’s corporate name.

15. Defendant No.1 received PAN Number and obtained license from the Drug Control Administration, Government of Andhra Pradesh in December, 2017.

16. Defendant No.1 registered the impugned domain name www.daiwapharma.com through Defendant No.2 on 21st December, 2017.

17. In January, 2018, Defendant No.1 received registration of Udyog Aadhar Management from