Bombay High Court
Daiwa Pharmaceutical Co Ltd vs Daiwa Pharmaceuticals Pvt Ltd And Ors on 16 April, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
2024:BHC-OS:6232
901-ia-2077-2023.doc
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.2077 OF 2023
IN
COM IP SUIT NO.82 OF 2023
Daiwa Pharmaceuticals Co. Ltd. ...Applicant / Plaintiff
Versus
Daiwa Pharmaceuticals Pvt. Ltd. & Ors. ...Defendants
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Mr. Sharan Jagtiani, Senior Advocate, Mr. Thomas George, Mr.
Navankur Pathak, Ms. Roma Liya and Mr. Siddharth Joshi and Ms.
Tanvi Sinha i/b. Saikrishna & Associates for the Plaintiffs.
Mr. Shanay Shah with Mr. Ashutosh Kane and Ms. Maitri Asher i/b.
W.S. Kane & Co. for the Defendant No.1.
Pheroze F. Mehta i/b. Solaris Legal for Defendant Nos.2 and 3.
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CORAM : R.I. CHAGLA J
Reserved on : 22ND DECEMBER, 2023.
Pronounced on : 16TH APRIL, 2024.
ORAL ORDER:
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 1/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc 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, 2/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc 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' 3/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc
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 4/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc 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 5/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc of Udyog Aadhar Management from the Ministry of MSEM and GST registration.
18. Defendant No.1 on 10th January, 2018 applied for registration of the trademark ' ' bearing Registration No.3723447 under Class 5.
19. On 13th January, 2018, the Defendant No.1 obtained a license from the Food Business Operator under FSS Act, 2006, in the category of Foodstuffs intended for nutritional uses.
20. Defendant No.1 has issued invoices in the State of Andhra Pradesh from 5th April, 2018 to 6th March, 2023.
21. The Plaintiff applied for registration for the word mark IMBRAN bearing Application No.4336261 under Class 5 on 2nd November, 2019. The said mark is now registered.
22. On 7th April, 2021, the Plaintiff had conducted a private investigation on Defendant No.1 through a professional corporate 6/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc investigator.
23. Defendant No.1 was provided an importer-Exporter Code by the Office of the Joint Director General of Foreign Trade, Visakhapatnam on 20th May, 2021.
24. The Plaintiffs through its Advocates addressed a cease and desist notice dated 9th June, 2021 to Defendant No.1 to desist from using the Plaintiff's trademark and to stop passing off the Defendant No.1's product as that of the Plaintiff.
25. Defendant No.1 in its reply dated 17th June, 2022 to the cease and desist notice refused to adhere to the requisitions of the Plaintiff and it is the Plaintiffs case that they continued to pass off its goods as that of the Plaintiffs.
26. The Plaintiff applied for trademark registration for the word mark 'DAIWA' in India under Class 5, 35 and 42 consisting of application Nos.5350892, 5350893 and 5350895 respectively on 1st March, 2022.
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27. Defendant No.1 renewed the license from Food Business Operator under FSS Act, 2006 in the category of Foodstuffs intended for nutritional uses on 19th April, 2022. The Defendant No.1 was issued ISO 9001 : 2015 Quality Management System Certificate on 1st October, 2022.
28. The present Suit and Interim Application was filed on 11th January, 2023.
29. The Plaintiff filed Rectification Petition against the Defendant No.1 qua the trademark Registration No.3723447 on 12th January, 2023.
30. Mr. Sharan Jagtiani, the learned Senior Counsel appearing for the Plaintiff has submitted that the Plaintiff is the prior user of the mark 'Daiwa' and has acquired immense reputation and goodwill in its trademarks worldwide including in India. The Plaintiff's trademarks are and have been exclusively associated with the Plaintiff's products. He has submitted that the members of the trade and general public who are acquainted with the Plaintiff's product rendered under the Plaintiff's Trademarks upon coming 8/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc across the Defendant's impugned products and impugned website offered under the impugned marks are likely to be confused and / or deceived into believing that the Defendant's impugned products and impugned website are those of the Plaintiff and / or are originating from the Plaintiff and / or are connected in the course of the trade with the Plaintiff. He has submitted that the impugned marks and / or the impugned domain name of the Defendant No.1 is bound to be mistaken for the Plaintiff's trademarks. By the use of the impugned mark and impugned domain name, the Defendants have been passing off its impugned products and / or business as and for the Plaintiffs well known products and / or business.
31. Mr. Sharan Jagtiani has submitted that the Plaintiff being a world renowned company is very well known within the International and Indian Pharmaceutical Industry by pharmaceutical companies, manufacturers, wholesalers and distributors etc all of whom relate the trading name 'Daiwa Pharmaceutical' and or the house mark 'Daiwa' to that of the Plaintiff. He has submitted that for assessing whether there exists a likelihood of confusion, the relevant market would be such entities involved in the trading of pharmaceutical products and the consuming public. 9/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
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32. Mr. Sharan Jagtiani has submitted that the seminal case on transborder reputation in Indian jurisprudence is N R Dongre & Ors. Vs. Whirlpool Corporation & Anr.1. He has submitted that the Plaintiff in the said case filed Suit for passing of against the Defendant seeking to restrain it from using the trade mark 'Whirlpool'. The claim of the Plaintiff is based on prior user of the mark and transborder reputation which had spilled over into India. He has submitted that it is pertinent to note that at the time of filing of the Suit, the Plaintiff did not have a registration in India for its mark 'Whirlpool'. The Defendant did. The learned Single Judge in the said case granted the Plaintiff an injunction against the Defendant. Further, the Division Bench dismissed the Appeal and the SLP filed against the Division Bench Order was also dismissed by the Supreme Court. Thus, the findings of the learned Single Judge and Division Bench were confirmed.
33. Mr. Sharan Jagtiani has submitted that the principles of transborder reputation emanating from the decision in N.R. Dongre (Supra) are as follows:-
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(i) There is no requirement of actual sale in the markets in India. Goodwill can be held to have permeated into India by virtue of magazines having international circulation including in India. In paragraph 10 of the said judgment, it has been held that, "Even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade mark."
(ii) Prior user of the mark, even internationally, is a factor to be considered;
(iii) Under Section 27(2) of the Trade Marks Act, the action in passing off is maintainable against a registered user.
34. Mr. Sharan Jagtiani has submitted that the principles laid down in N.R. Dongre (Supra) have been reiterated and applied time and again by Courts in India, including in the judgment of the Division Bench of the Delhi High Court in MAC Personal Care and Anr. V.s Laverana GMBH & Anr.2. In the case of Laverana (Supra), the Division Bench was considered whether the Plaintiff had established transborder reputation. In deciding this issue, the Court rendered 2 2016 SCC OnLine Del 530.
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901-ia-2077-2023.doc important findings on the meaning of transborder reputation as understood in India and offered a refinement to the principles laid down in N.R. Dongre (Supra). He has placed reliance upon 14 to 16 of Laverana (Supra). It has been held that it is not necessary for the mark to have been in commercial use in the Indian market in order to maintain an action for passing off. International reputation and renown may suffice if the same spills over to India. Further, in paragraph 16 of the Laverana (Supra), the Court held that with the growth of internet and the modern means of communication including radio, television and broadcasting, the second element is relatively easier to establish as compared to the position which existed even one decade ago.
35. Mr. Sharan Jagtiani has also submitted that principles that can be discerned from the aforementioned judgments on the meaning and application of the principle of transborder reputation are that the mark must have a strong international reputation. This can be shown, inter alia, by strong volume of sales internationally, registration in multiple jurisdictions and prior user. The International reputation and goodwill must spill over into India. It is nobody's case that the International reputation being ipso facto proves reputation 12/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc and goodwill in India ("the universality principle"). Further, spillage into India can be shown by circulation of international magazines and journals in India, access through internet sources, seminars etc. Given the proliferation of cutting edge modern means of communication, the spillage is relatively easy to show. Further, there is no requirement to have actual sales in India.
36. Mr. Sharan Jagtiani has referred to the judgment in Toyota Vs. Prius Auto3, reliance on which has been placed by the Defendant No.1. He has submitted that Toyota (Supra) has not diluted the position of law as laid down by the Supreme Court in N.R. Dongre (Supra). Both judgments have been rendered by the Two Judge bench, there can be no dilution of the position of law as law laid down in N.R. Dongre (Supra). He has submitted that Toyota (Supra) does not hold as contended by Defendant No.1 that to prove transborder reputation, a Plaintiff has to prove actual sales in India. The said decision is entirely in consonance with the principles laid down in N.R. Dongre(Supra) and Laverana (Supra). It uses language to reiterate the 'territoriality principle', as contra-distinguished from the 'universality principle'.
3 2018 (73) PTC 1.
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37. Mr. Sharan Jagtiani has submitted that the case of the Plaintiff has always been that its international reputation and goodwill of the mark Daiwa has spilled over into India. He has submitted that the mark in the present case is with regard to pharmaceutical products and hence regarding the pharmaceutical industry. He has submitted that Milmet Oftho Industries and Ors. Vs. Allergan Inc.4 has been relied upon in Mayo Foundation for Medical Education and Research Vs. Bodhisatva Charitable Trust5. The Delhi High Court in Mayo Foundation (Supra) has held that the marks which are in respect of pharmaceutical products is required to be tested in accordance with the law laid down by the Supreme Court in Milmet (Supra). Reliance has been placed on paragraphs 8 and 9 of Milmet (Supra). At paragraph 9 of Milmet (Supra), it has been held that the mere fact that the Respondents have not been using the mark in India would be irrelevant, if they were first in the world market. On the basis of the material, the Court had held that the Respondents were first to adopt the mark in the world market. If that be so, then no fault can be found with the conclusion drawn by the Division Bench. There was material which prima facie showed that the Respondents product was advertised before the Appellants 4 (2004) 12 Supreme Court Cases 624.
5 2023 SCC OnLine DEL 3241.
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38. Mr. Sharan Jagtiani has submitted that in Mayo Foundation (Supra) it was held that the observations of the Supreme Court in the case of Milmet (Supra) are fully applicable in the facts of the present case, as the present case concerns 'hospitals' and 'educational services relating to medicine'. It was held that adoption of the Defendants of an identical trademark in relation to the identical services was an attempt to ride on the goodwill and reputation of the Plaintiff. Therefore, a prima facie case of passing off had been made out by the Plaintiff.
39. Mr. Sharan Jagtiani has submitted that the aforementioned decisions in the case of Milmet (Supra) and Mayo Foundation (Supra) are applicable in the present case. He has also placed reliance upon the Delhi High Court Judgment in Cephalon, Inc. Vs. Maneesh Pharmaceutical Ltd. & Ors. 6, wherein the Plaintiff was not selling its product in India and same was not available in the Indian market. Further, the product of the Defendant was used for completely different medical condition and the manner of storage 6 MANU/DE/2829 of 2016 decided on 19th October, 2016. 15/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
901-ia-2077-2023.doc and channels of distribution were also different. Despite then the Court relying upon the principles of Milmet (Supra) injuncted the Indian party.
40. Mr. Sharan Jagtiani has submitted that Doctors and Medical practitioners usually keep themselves abreast of all development in medical sciences and it is a common practice for doctors to attend medical conferences in order to share their experiences and learn from others. Given the environment of medical science, it would be most undesirable if a drug for a given treatment is known by a particular trademark in one country and a drug for another treatment is sold under the same trademark in another country.
41. Mr. Sharan Jagtiani has submitted that the facts in the present case clearly establish that the Plaintiff has an international reputation and goodwill and such reputation and goodwill has spilled over into India, thereby establishing transborder reputation. He has placed reliance upon the Exhibits in the Plaint which establish that the Plaintiff has an international goodwill and reputation. These include 13 trademark registrations which have been obtained by the 16/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Plaintiff for the mark 'Daiwa' across five countries namely, Japan, USA, UK, South Korea and China. The Plaintiff has obtained 153 trademark registration for its products across 25 countries including in India. The Plaintiff has further obtained patent registration in Japan, USA, China, Germany, England, South Korea and Taiwan for various products.
42. Mr. Sharan Jagtiani has submitted that the Plaintiff has at present entered into 49 Distribution Agreements across 54 countries for manufacturing and distributing Plaintiff's Nutraceutical / Pharmaceutical products. Further, from year 2013 to 2020, the Plaintiff participated in more than 23 exhibitions, attended by thousands of representatives of pharmaceutical / nutraceutical industry including professional / customers from India. Exhibitions were held in US, Europe, UK, Singapore, Vietnam, China, Taiwan, Middle East.
43. Mr. Sharan Jagtiani has further referred to seminars and workshops which have been conducted by the Plaintiff since 1996. The Plaintiff has conducted more than 19 workshops and seminars in US, Europe, Philippines and Japan attended by health practitioners, 17/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc pharmaceutical distributors.
44. Mr. Sharan Jagtiani has further referred to the research and development (R & D) conducted by the Plaintiff and which has been published in Scopus, Lancet and JSLR containing references to DAIWA products published in India. There are more than 100 such research publications, sample list of 30 publications filed.
45. Mr. Sharan Jagtiani has submitted that the sale of Daiwa products internationally has been from the year 2000 to 2016 and sample invoices (75) have been annexed to the Plaint.
46. Mr. Sharan Jagtiani has also referred to the several awards which have been received by the Plaintiff including "Rising, Small and Median Enterprises" from Minster of Economy, Trade and Industry of Japan. On 3rd November, 2022, the President of the Daiwa Pharmaceutical Co. Ltd. was awarded "Honoured Person of the Order of the Rising Sun, Silver Rays" by the Japanese Emperor in Special recognition.
47. Mr. Sharan Jagtiani has submitted that the Plaintiff has 18/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc spent US$ 3 million since 2016 on R & D and has spent more than US$ 8 million since 2016 on its promotional activities. Chartered Accountant certificate has been filed in support thereof which is annexed at Exhibit T to the Plaint.
48. Mr. Sharan Jagtiani has submitted that the Plaintiff has derived a substantial amount of revenue from the worldwide sale of Plaintiff's products sold / distributed / marketed / promoted / published under the trading name 'Daiwa Pharmaceutical'. The Chartered Accountant certificate has been filed which is at Exhibit T to the Plaint. He has submitted that in the year 2021 the group sale revenues was US$ 18,434,000.
49. Mr. Sharan Jagtiani has submitted that the Plaintiffs products have been sold across Amazon, eBay and Dessert Cart.
50. Mr. Sharan Jagtiani has submitted that since 2010, the Plaintiff has been continuously and consistently receiving enquiries from across the cities in India from consumers and prospective distributors as is evident from an indicative list of such enquiries which have been annexed at Exhibit Y2 - Y16 to the Plaint. 19/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
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51. Mr. Sharan Jagtiani has submitted that there is undoubtedly spillover of the reputation of the Plaintiff in India and apart from that, the Plaintiff has also direct presence and use in India and has manifest intention to develop and market in India. He has referred to the prospective emails which have been sent by the Plaintiff from the year 2003 - 2022 to Pharmaceutical Companies including Cipla, Dabur, Cadila, Dr. Reddy and Sun Pharma.
52. Mr. Sharan Jagtiani has submitted that the products which were sold by Elder in the year 2006 - 2013 always featured 'under license from Daiwa Pharmaceutical Co. Ltd.' There have been Confidentiality Agreements entered into by the Plaintiff from the year 2013 - 2022 with the intention to conduct business and exploring distribution options in India which have been annexed at Exhibit AA1
- AA7 to the Plaint.
53. Mr. Sharan Jagtiani has submitted that use of the mark in India is not limited to only sale of the products, as sought to be canvassed by the Defendant. The Courts have held that even pre- launch and preparatory activities carried out including e-mails issued by the entity amounts to use of the mark in India. He has in this 20/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc context placed reliance upon the decision of the Delhi High Court in Radico Khaitan Ltd. Vs. Devans Modern Breweries7.
54. Mr. Sharan Jagtiani has submitted that Defendant No.1 is habitual / serial offender. Prior to being appointed as a Director of Defendant No.1, Mr. Nageswararao was a Director of Mylin Pharmaceutical Pvt. Ltd., which company uses the mark 'MYLIN' which mark is nearly identical / closely, deceptively and confusingly similar to the renowned name and mark 'MYLAN' (registered in India under Trade Mark No.1540483 in the name of Mylan Inc.). Further, prior to being appointed as a Director of Defendant No.1, Sita Kusuma Deeti was also the Additional Director of Okinawa Pharmaceutical Private Ltd. Post the Director joining Defendant No.1, Defendant No.1 started manufacturing and distributing products which are not only deceptively similar to Okinawa's but were also similar to the look, get up and packaging of the products. He has submitted that against this background, the adoption and use of the Plaintiff's House Mark 'DAIWA' by Defendant No.1 cannot be said to be honest or bonafide since it is evidently an extension of the nefarious and illicit scheme perpetrated by Mr. Nageswararao, 7 2019 SCC OnLine Del 7483 21/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Director of Defendant No.1.
55. Mr. Sharan Jagtiani has submitted that the Defendant No.1 has a misleading website where it claims to have been professionals who basically acquired very rich experience in varied product divisions through top-ranking pharmaceutical companies. He has submitted that the impugned website makes further completely misleading and fraudulent claims about the business of Defendant No.1 to mislead the general public into believing that Defendant No.1 is a well established, functional and trustworthy company in the pharmaceutical sector. Further, reference is made to import of raw materials from Japan.
56. Mr. Sharan Jagtiani has submitted that the Defendant No.1 registered the domain name namely www.daiwapharma.com on 21st December, 2017 referred to as 'old website' which is identical / deceptively similar to the Plaintiff's domain name https://www.daiwa-pharm.com". After the institution of the Suit in January, Defendant No.1's domain name was taken down and available for purchase. Defendant No.1 thereafter registered a revised domain name daiwapharmaceuticals.com on 1st March, 2023 and 22/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc referred to as 'revised website'. The revised website removed the reference and connection to Japan and other countries outside India.
57. Mr. Sharan Jagtiani has submitted that explanation of the Defendant No.1 for adoption of the trademark is an afterthought. According to the Defendant No.1 the mark Daiwa has been adopted on the advice of spiritual Guru which in Sanskrit means destiny or fate and Telegu term Daiwam which means 'God; or 'Divine'. However, Defendant No.1 in Reply to the legal notice dated 17th June, 2021 mentioned that Daiwa is a coined and invented the term and has its unique graphical design. There is no mention of the meaning of the Daiwa derived from Sanskrit or Telegu terms or on the advise of the spiritual Guru. Thus, inconsistent stand taken by Defendant No.1 indicates dishonest intention behind the adoption of the trademark 'Daiwa'.
58. Mr. Sharan Jagtiani has submitted that the simple search of the Plaintiff's corporate name 'Daiwa Pharmaceutical Co. Ltd' on google puts up results of Plaintiff and the Defendant No.1, thus resulting in initial user confusion amongst consuming public. 23/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
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59. Mr. Sharan Jagtiani has accordingly submitted that there are visual and structural similarities between both the Plaintiff's mark and the Defendant's mark. The Defendant No.1 has adopted, represented and used identical corporate name 'Daiwa Pharmaceuticals Pvt. Ltd.' as that of the Plaintiffs corporate name 'Daiwa Pharmaceutical Co. Ltd.' Further, Defendant No.1 has adopted a confusingly similar impugned mark as of that of the Plaintiff trademark . There is adoption, representation and use by Defendant No.1 of a nearly identical font and color, structure and the logo and word marks in the impugned DM as that of the word marks comprising the Plaintiff's DM . Further, there is identical placement and use of the expression 'Pharmaceutical Pvt. Ltd.' below the word 'Daiwa' in the Defendants' impugned mark as that represented in the Plaintiffs Trademark as well as use of the word 'DAIWA' as an essential and permanent feature in the impugned mark exactly in the same as that of the Plaintiff's Trademark. This indicates that the Defendants have 24/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc adopted the mark in a malafide manner, blatantly copied the exact representation as that of the Plaintiff and claimed association to Japan (which now stands deleted from the amended website) solely to ride on the coat tail of the immense goodwill of the Plaintiff garnered internationally as well as amongst the Indian Pharmaceutical companies, distributors, customers.
60. Mr. Sharan Jagtiani has accordingly submitted that the relief sought for in the present Interim Application be granted so as to restrain the Defendant from passing off the impugned mark as that of the Plaintiff's Trademark.
61. Mr. Shanay Shah, the learned Counsel appearing for the Defendant No.1 has submitted that the Defendant No.1 is the honest and bonafide adopter of the name and mark 'DAIWA'. The word 'DAIWA' in Sanskrit means destiny or fate. He has submitted that the word 'Daiwa' is derived from the Telegu word 'Daiwam', which means God or Divine. The Director of Defendant No.1 after consulting his spiritual Guru Mr. R. Narasimha Murthy, decided to name the company as Daiwa Pharmaceuticals Pvt. Ltd.
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62. Mr. Shanay Shah has referred to the documents which have been relied upon by the Defendant No.1 in order to contend that Defendant No.1 has established that it is a prior adopter and continuous user of the name and mark 'Daiwa' in India since December, 2017 till date. These documents have been annexed to the Affidavit of Defendant No.1 in reply to the Interim Application, which Affidavit is dated 18th March, 2023.
63. Mr. Shanay Shah has submitted that on a bear reading of the Plaint and documents annexed thereto, it is clear that the Plaintiff has no presence in India; it has no business in India and that it has failed to substantiate its alleged use of the name and mark 'Daiwa' in India. In any event, the rival goods were sold under completely different and dissimilar trademark / product identification mark.
64. Mr. Shanay Shah has submitted that the Plaintiff has clearly admitted that distribution and commercial activities of its products are in several countries, a list whereof is set out at Exhibit H, except in India. If that is the case, the substratum of the Plaintiffs case that it has transborder reputation owing to spillage of goodwill owing to prior and continuous use of its mark 'Daiwa' in India, is ex 26/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc facie belied and negated.
65. Mr. Shanay Shah has submitted that intrinsically interwoven facet of the term 'transborder' reputation is spillage of reputation in another country by virtue of continuous use of a mark. Modern day trade and globalization have brought in multi-channel modes of sale of goods in the market and therefore it is the Territoriality doctrine (a trademark being recognized as having a separate existence in each sovereign country) which would hold the field. He has in this context relied upon decision of the Supreme Court in Toyota (Supra).
66. Mr. Shanay Shah has submitted that merely because the Plaintiff claims to have sales all across the world, (except in India) does not lend itself to a presumption that customers in India (of average intelligence) will know the mark of the Plaintiff. Merely, because the Plaintiff was prior user of its trade mark in one jurisdiction, it would not ipso facto entitle it to claim exclusive rights to the said mark in another dominion (in this case being in India). The Plaintiff had on a specious plea of proposed business activities has attempted to take a chance by initiating the present action for 27/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc passing off.
67. Mr. Shanay Shah has at the prima facie stage, analyzed the documents relied by the Plaintiff in the Plaint and on basis of such analysis, submitted that it is evident that the said documents annexed to the Plaint do not have a relevance to India as well as do not establish that business has been conducted by the Plaintiff in India and further are irrelevant documents which do not prove use, goodwill and reputation of the mark 'Daiwa' in India.
68. Mr. Shanay Shah has submitted that the said documents prima facie lead to an inevitable conclusion that the mark of the Plaintiff has not acquired goodwill and reputation in the Indian market, so as to vest in the Plaintiff the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off against the registered owner of the mark 'DAIWA' in India.
69. Mr. Shanay Shah has submitted that transborder reputation exists when a trademark and the products associated with the trade mark surpasses the physical borders of the region and gains reputation across the border or beyond the territorial limitation of 28/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc the geographical region due to its promotions, commercial publicity, advertisements and its presence in the market at large.
70. Mr. Shanay Shah has submitted that in the present case, the Plaintiff has not able to show that its reach in terms of promotions, publicity, advertisements or presence in the market at large is such that it has acquired immense goodwill or reputation in India. The Plaintiff is required to prove that it has not only acquired goodwill or reputation worldwide but that the same is on such a large magnitude that the same has split over to other jurisdictions or markets in India.
71. Mr. Shanay Shah has submitted that the Plaintiff must prove that it has customers within the jurisdiction in which it claims the goodwill. It is not enough to show that the members of the current jurisdiction are customers when they are abroad. The Plaintiff cannot claim passing off in a country in which it has no customers. He has placed reliance upon decision of the Court in England viz., Starbucks (HK) Ltd. and Anr. Vs. British Sky Broadcasting Group PLC and Ors.8.
8 (2015) UKSC 31.
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72. Mr. Shanay Shah has submitted in the present case, the Plaintiff has failed to show that it has a customer base in India at all. The distributorship agreement with Elder Pharmaceuticals Ltd. is not proof of actual sale of its products or actual customer base. No invoices have been shown to establish any actual sale in India to Indian customers. Furthermore, it is the Plaintiff's case that it is exploring distribution opportunities in India and clearly indicates that it does not have any distribution to Indian customers as of today.
73. Mr. Shanay Shah has submitted that there must be evidence to show that the Plaintiff has acquired substantial goodwill for its trade name in the Indian market. Scattered articles and publications online in specialized magazines / publications do not firmly establish the acquisition or presence of goodwill or reputation in India. He has placed reliance upon the decision of the Supreme Court in Toyota (Supra), the decisions of Delhi High Court in Carlton Shoes Ltd. and Anr. Vs. VIP Industries Ltd. 9 and Bolt Technology OU Vs. Ujoy Technology Pvt. Ltd. and Anr. 10 which has followed Toyota (Supra).
9 2023 SCC Online Del.4223.
10 2023 SCC Online Del.1122.
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74. Mr. Shanay Shah has submitted that the Plaintiff in the present case has failed to provide evidence that shows goodwill in the Indian market. Even if the alleged presence of the Plaintiff in India for six years during the agreement with Elder is to be considered, the same may at best amount to use, even though the Plaintiff has not led any evidence of actual sale. Use of a trade mark is however different from acquiring goodwill or reputation in a trade mark. The prolonged usage of a trade mark in association with a particular business group helps the trader to gain reputation and goodwill with respect to its particular jurisdiction, which in this case the Plaintiff has not been able to demonstrate. He has placed reliance upon decision of this Court in Kores (India) Ltd. Vs. Whale Stationery Products Ltd.11 in support of his contention that prior user must be established on the basis of the clear and cogent evidence. The evidence laid down by the party seeking to establish continuous prior user will be required to be considered in the background of the nature of the product, the type of sales, the territory within which it is sold and the scale of manufacturer of the product. He has submitted that the Plaintiff has failed to establish the continuous prior user in the present case.
11 2008(3) Mh.L.J. 523.
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75. Mr. Shah has also placed reliance upon the decision of this Court in Abhay Agarwal and Ors. Vs. Puranmal Goods Pvt. Ltd. 12 to contend that when a business is abandoned in a country in which it has been previously carried on, the goodwill associated with the use of that mark in the country perishes, even if continued to be used in another country. He has submitted that the Plaintiffs' use even if it is presuming that there was a use of the Plaintiff's mark for six years during the Agreement with Elder till the year 2013, there had thereafter been no use and thus, the goodwill associated with the use of that mark in the country had perished even if continued to be used in other countries.
76. Mr. Shanay Shah has submitted that the use of the trade name of the Plaintiff during the Elder Agreement was in the limited capacity as license on the counterfoil of the alleged goods. The documents produced by the Plaintiff pertain to other jurisdiction and in no way indicates spill over of the alleged reputation to the Indian market.
77. Mr. Shanay Shah has submitted that to claim transborder 12 2016 SCC OnLine Bom 5187.
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901-ia-2077-2023.doc reputation for the mark in India the Plaintiffs trade mark must be well known to a substantial segment of consumers in India and they must know about the existence of the mark of the foreign entity. The Plaintiff has not led any evidence to prove that its goods under the trademark 'Daiwa' were freely available or extensively advertised to customers in the Indian market. The Plaintiff's reliance on the research papers or medical journals is not relevant as the same does not have extensive circulation to the mass public in India.
78. Mr. Shanay Shah has submitted that mere presence of a few Indian medical practitioners at the exhibitions or seminars merely shows knowledge if at all of the Plaintiff, but in no way does the same constitute acquisition of goodwill or reputation in the trade mark / name 'Daiwa'. The Plaintiff ought to have demonstrated that the trade mark 'Daiwa' has acquired such a high degree of goodwill, reputation and popularity in the Indian market so as to create a right of prior user in its favour against a registered owner. He has placed reliance upon the decision of the Supreme Court in Toyota (Supra) in this context.
79. Mr. Shanay Shah has submitted that the Plaintiff may 33/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc have alleged worldwide use of the trademark but has not led any evidence to show that it has acquired the degree of reputation or goodwill or popularity in the Indian market or such that can be spilt over to the Indian market.
80. Mr. Shanay Shah has submitted that in pharmaceutical industry the products are known by their product name and not by their company name. He has placed reliance upon the decision of this Court in Pidilite Industries Ltd. V. Jubiliant Agri Consumers Products Pvt. Ltd.13 in support of his contention. He has submitted that the goods are only known by their products identification mark and not by the house mark.
81. Mr. Shanay Shah has submitted that the Defendant No.1 has used of its mark since 2017 and thus no case is being made out by the Plaintiff to injunct the Defendant from using its impugned mark, particularly when there has been continuous user since year 2017. He has accordingly submitted that the Plaintiff has not been able to show it has goodwill in India and / or presence through its mark in the territorial jurisdiction of India. Thus, it fails to meet the 13 NOM (L) 1717 of 2013 decided on 10th October, 2013. 34/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
901-ia-2077-2023.doc principles laid down by the Supreme Court in Toyota (Supra), which has been followed by the Delhi High Court in Bolt Technology OU (Supra) and thus no case of passing off the impugned mark with that of the mark of the Plaintiff has been made out.
82. Having considered the rival submissions, it would be necessary to determine whether the Plaintiff has been able to establish transborder reputation in India. The Supreme Court in Toyota (Supra) has laid down the 'Territoriality Principles' on which transborder reputation is to be tested. However, in my view, the law laid down in N.R. Dongre (Supra) on transborder reputation still very much remains with some refinement by the latter decision of the Supreme Court in Toyota (Supra).
83. The N. R. Dongre (Supra) is the seminal case on transborder reputation in Indian jurisprudence. One of the principles emanating from N.R. Dongre (Supra), is that there is no requirement of actual sales in the market in India. This principle has not been departed from in Toyota (Supra). Further, the refinement in Toyota (Supra) is only with regard to the "Territoriality Principle" which requires spill over of goodwill and reputation of the Plaintiff mark in 35/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc the territory in which it is maintaining an action for passing off i.e. in the present case in India. This is in contra-distinguishing from the universality principle. It can be seen from the decision of the Supreme Court in N.R. Dongre (Supra) that prior use of the mark, even internationally is a factor to be considered and still remains a factor to be considered, provided that the goodwill and reputation established by the Plaintiff internationally has spilled over into India. Further, there is no dilution of the principle laid down in the N.R. Dongre (Supra) viz. an action in passing off is maintainable against a registered user and this has also been statutorily provided under Section 27(2) of the Trademarks Act.
84. Further, it can be seen from the decision of the Delhi High Court in Laverana (Supra) that the "territoriality principle" has been recognized and understood in the Indian context. In that case the Delhi High Court held that for maintaining an action of passing off, international reputation and renown may suffice if the same spills over to India. This very same principle has been carried forward and recognized by the Supreme Court in the case of Toyota (Supra).
85. Accordingly, in order for the Plaintiff to establish 36/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc transborder reputation, it is necessary for the Plaintiff to establish that its mark has a strong international reputation as evident from the volume of sales internationally, registration in multiple jurisdictions and prior user. Further, such international reputation and goodwill must spill over into India. The spill over into India can also be shown by circulation of international magazines and journals in India as well as access through internet sources, seminars etc. Further, there is no requirement to have actual sales in India.
86. A relevant factor to be borne in mind is that the Plaintiff's mark is in respect of pharmaceutical products. It has been held by the Supreme Court in Milmet (Supra) which has been followed by the Delhi High Court in Mayo Foundation (Supra), decisions relied upon by the Plaintiff, that in the event the material relied upon by the Plaintiff prima facie shows that the Plaintiff's product was advertised before the Defendant entered the field, the Plaintiff being the first to adopt the mark, is then be able to maintain an action for passing off. The mere fact that the Plaintiff has not been using the mark in India would be irrelevant if they were first in the world market. Thus, there does appear to be special segment carved out for pharmaceutical products and the test of transborder 37/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc reputation would in my view have to be liberal and such reputation may be derived from advertisement and publicity of the Plaintiff's mark and cited in Indian newspapers, magazines and online publications. In the event of pharmaceutical products, Doctors and medical practitioners usually keep themselves abreast of all development in medical sciences. Further, it is a common practice for Doctors to attend medical conferences in order to share their experiences and learnt from others. Thus, I find considerable merit in the submissions of Mr. Sharan Jagtiani that the Plaintiff has been able to establish through the various publications; and advertisements in India as well as R & D promotional activities that its reputation has spilled over into India. Further, it can be seen that the Plaintiff has several trademark registrations for its products across 25 countries including in India.
87. Apart from the above factors showing transborder reputation, the Plaintiff has at present entered into 49 Distribution Agreements across 54 countries for manufacturing and distributing Plaintiff's Nutraceutical / Pharmaceutical products. Further, from the year 2013 to 2020, the Plaintiff participated in more than 23 exhibitions, attended by thousands of representatives of 38/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc pharmaceutical / nutraceutical industry including professional / customers from India.
88. The Plaintiff has been awarded several awards and recognized for maintaining excellent supply chain efficiency. The sheer magnitude of the revenue generated by the Plaintiff from worldwide sale can be seen from the year 2021 itself when the gross sale revenues was $18,434,000. The Plaintiff has further spent US$ 3 million since 2016 on R & D and has spent more than US$ 8 million since 2016 on its promotional activities which is backed up by the Chartered Accountant Certificate. Thus, in my view the Plaintiff has been able to establish an international reputation and goodwill which has met the parameters of "territoriality principle" by its international goodwill and reputation having spilled over into India.
89. In addition, the Plaintiff has had a presence in India through its distributor Elder Pharmaceutical ('Elder') and the Plaintiff's products were sold in the years 2006 - 2013 by Elder always featured 'under license from Daiwa Pharmaceutical Co. Ltd.' Thus, the customers would necessarily have borne in mind the Plaintiffs house name. This would be yet another factor which makes 39/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc it evident that the Plaintiff's reputation has spilled over into India. Further, the Plaintiff has entered into Confidentiality Agreements with the intention to conduct business with several Indian entities which have been relied upon and exhibited at AA1 - AA7 to the Plaint.
90. In the decision of the Delhi High Court in Radico Khaitan Ltd. (Supra) relied upon by the Plaintiff, it has been held that pre- launch and preparatory activities carried out including e-mails issued by the entity amounts to use of the mark in India.
91. I do not find merit in the submission of Mr Shanay Shah on behalf of the Defendants that the Plaintiff has not been able to show that its reach in terms of promotions, publicity, advertisements or presence in the market at large is such that it has acquired immense goodwill or reputation in India. Although, the Plaintiff currently may not have physical presence in India, it has been able to establish that not only in the past it had a presence in India through its distributor Elder but also its goodwill and reputation has spilled over into in India through its promotions, publicity and advertisements. This necessary has to be seen from the context of the 40/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Plaintiff's product being a pharmaceutical product, where as aforementioned the test of transborder reputation would be as laid down in Milmet (Supra). Thus, it would be sufficient for the Plaintiff to prima facie show that it has advertised its product before the Defendant entered the field, which it has done so in the present case. Thereby establishing that the Plaintiff was first to adopt the mark.
92. I thus prima facie find that the Plaintiff has been able to adduce the material to show that it has acquired a high degree of reputation in the trade name mark 'Daiwa' and that its worldwide goodwill and reputation has spilled over into India.
93. The decision relied upon by Mr. Shanay Shah for the Defendants viz. Starbucks (Supra) in support of his contention that the Plaintiff cannot claim passing off in a country where it has no commercial use, is inapplicable in the present case. The standard for establishing transborder reputation is well settled and distinct from the standards in foreign jurisdictions such as the Courts in England which passed the decision in Starbucks (Supra). In fact, in Starbucks (Supra) the Court has recognized that different common law jurisdictions have adopted different standards. The decision in 41/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Starbucks (HK) Ltd. (Supra) would be restricted to the facts of that case as has been held in paragraph 67 in that decision.
94. In so far as the decision of this Court in Pidilite (Supra) which has been relied upon by Mr. Shanay Shah in support of his contention that goods are known by their product identification mark, the reliance has been misplaced. The decision in that case was not whether the trademark / house mark / trade name 'Fevicol' could be protected, the question before the learned Judge was whether the sub brand and product identification mark 'Marine' could be protected. I find much substance in the submission of Mr. Sharan Jagtiani that if the contention on behalf of the Defendants is to be accepted, then, it would enable anyone to adopt and utilize wellknown trade names, corporate names, and house marks, such as Tata, Volvo, Mahendra and Mahendra, Kirloskar, or Fevicol which is not the case.
95. Further, I do not find the decision relied upon by the Mr. Shanay Shah in Kores (India) Ltd. (Supra) to be applicable in the facts of the present case, considering that in that case, the Plaintiff had abandoned its mark in India which is not so in the present case. 42/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
901-ia-2077-2023.doc The documents relied upon by the Plaintiff in the present case suggest that the Plaintiff had a business in India and continues to use the mark in India. Further, in Kores (India) Ltd. (Supra) there was no dishonest adoption of the trademark by the Plaintiff, whereas in the present case, prima facie I find that the Defendant No.1 has dishonestly adopted the trademark in India.
96. The dishonest adoption of the trademark by the Defendants is borne out from the website of Defendant No.1 which initially indicated a reference to Japan. However, the same was removed after the suit was instituted. The domain name of Defendant No.1 was deceptively similar to the Plaintiff's domain name i.e. www.daiwapharma.com. This was also removed after the suit was instituted in February. A fresh website and domain name was created removing the reference to Japan and changing of domain name to www.daiwapharmaceuticals.com during the pendency of the proceedings.
97. I further prima facie find that the Defendant No.1 is a habitual offender as Mr. Nageshwarrarao prior to being appointed as Director of Defendant No.1 was a Director of Mylin Pharmaceuticals 43/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Pvt. Ltd. which uses the mark Mylin similar to the renowned name and mark 'Mylan' registered in the name of Mylan Inc. Further, the Director of Defendant No.1, Sita Kusuma Deepti was also additional Director of Okinawa Pharmaceuticals Pvt. Ltd. Post the Director joining Defendant No.1, Defendant No.1 started manufacturing and distributing products which are not only deceptively similar to Okinawa's but were also similar to the look, get up and packaging of the products.
98. Although the Defendant No.1 in the Affidavit in Reply and in additional Affidavit filed in the present Interim Application claimed that the mark Daiwa has been adopted on the advice of spiritual Guru which in sanskrit means destiny or fate and Telegu term Daiwam which means 'God; or 'Divine', in the Reply to the cease and desist notice dated 17th June, 2021, the Defendants has mentioned that Daiwa is a coined and invented term and has its unique graphical design. Thus, there has been an inconsistent stand taken by Defendant No.1 and which prima facie indicates dishonest intention behind adoption of the trademark 'Daiwa'.
99. In so far as the decision of the Delhi High Court in Bolt 44/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc Technology OU (Supra), I find that the learned Single Judge had infact distinguished the case of Milmet (Supra) by holding that the principle in Milmet (Supra) referred to the pharmaceutical sector and on account of extensive literature and advertisements, with which doctors were necessarily conversant, existence of worldwide reputation could be presumed in the context of pharmaceutical products. The decision of the learned Single Judge was upheld by the Division Bench of the Delhi High Court. In the facts of that case where the Plaintiff did not have a single EV charging point, even for its own scooters, anywhere in the world at the time when Defendant launched the business of EV charging, it was held that the case of passing off had not been made out. This can be contrasted with the present case where in my prima facie view, the Plaintiff has been able to establish that it had user in India in the past and that the transborder reputation of the Plaintiff has spilled over into India.
100. I do not find any merit in the contention on behalf of the Defendants that the Plaintiff has not been able to rely on any document which establishes that it has acquired goodwill and reputation in the Indian market, so as to vest in the Plaintiff the necessary attributes of the right of a prior user so as to successfully 45/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 ::: 901-ia-2077-2023.doc maintain an action of passing off against the registered owner of the mark 'DAIWA' in India.
101. I find that the Plaintiff has made out a strong prima facie case for grant of interim relief against the Defendant No.1 in respect of passing off. The Plaintiff has been able to prima facie established that the Defendant No.1 has passed off its impugned mark as that of the Plaintiff's registered mark, considering that the mark of the Defendant No.1 is visually, structurally, phonetically and literally indistinguishable from the Plaintiff's mark. Accordingly, the Defendant No.1 is required to be restrained from continuing to uses the impugned mark. The balance of convenience lies in favour of the Plaintiff since the Defendant No.1 by adopting the impugned mark is clearly, in my prima facie view, attempting to dishonestly display a nexus between the Plaintiff and Defendant No.1. Thus, the balance of convenience is in favour of the Plaintiff and against the Defendants. The trademark of Plaintiff being a proprietary right, an invasion of the same should be protected and the balance of convenience could obviously be in Plaintiff's favour who was admittedly prior user of the marks in dispute. Further, there will be irreparable injury caused to the Plaintiff, if interim relief is not granted. 46/48 ::: Uploaded on - 16/04/2024 ::: Downloaded on - 17/04/2024 18:07:17 :::
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102. In view thereof, interim relief in terms of prayer Clauses
(a), (c) and (d) are granted which read thus:-
(a) Restrain Defendant No. 1 by itself and through its affiliates, directors, employees, agents, distributors, retailers, dealers, manufacturers, stockists and / or otherwise by an ad interim/ interim injunction from using, in any manner 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;
(c) Restrain the Defendant No. 1 from creating any third party rights to use and/or renew and/or register the same or similar trademarks in their name.
(d) Restrain Defendant No. 1, by itself and through its affiliates, directors, shareholders, employees, agents, and/or otherwise howsoever be restrained from offering the goods through the impugned domain name and from transferring or alienating in any manner dealing with the impugned domain name;
103. The Interim Application is accordingly disposed of. There shall be no order as to costs.
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104. At this stage, Mr. Shanay Shah, learned Counsel appearing for the Defendant No.1 has applied for stay of this Judgment and Order. Considering that the Defendant No.1 has been using the impugned mark since the year 2017, for a period of four weeks, this Judgment and Order is stayed.
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