Astellas Pharma Inc., a leading multinational pharmaceutical company, filed the present suit against Astellaz Pharmaceuticals, seeking a permanent injunction to restrain the defendant from infringing its registered trademark “ASTELLAS.” The case revolved around allegations of trademark infringement, passing off, and unfair competition, as the defendant had adopted the mark “ASTELLAZ,” which was nearly identical to the plaintiff’s well-established brand. The plaintiff argued that the defendant’s actions were calculated to mislead consumers into believing that their products were associated with or endorsed by Astellas Pharma.
Astellas Pharma Inc. is a Japanese pharmaceutical company with a global presence. It has been engaged in the business of pharmaceutical products since 2004 and has established itself as a trusted name in the industry. The plaintiff is the registered proprietor of the mark “ASTELLAS,” bearing registration no. 1319069 in Class 5, which includes pharmaceutical preparations, veterinary and sanitary products, and related goods. The trademark was registered in India with effect from November 4, 2004, and has remained valid and subsisting since then. Astellas Pharma has a significant presence in India through its subsidiary, Astellas Pharma India Private Limited, which was incorporated in 2008 and is engaged in the sales and marketing of its pharmaceutical products.
The dispute began in December 2022, when Astellas Pharma discovered that the defendant had applied for the registration of the mark “Astellaz Pharmaceuticals” in Class 35 for the trading of medicines. The defendant’s mark was published in Trade Mark Journal No. 2066, following which the plaintiff filed a Notice of Opposition on December 6, 2022. Despite receiving the opposition, the defendant continued to use the impugned mark in trade. Furthermore, the defendant had adopted a star-shaped device similar to that used by the plaintiff, making its overall trade dress and branding a slavish imitation of the plaintiff’s well-known mark.
The plaintiff also sent a cease-and-desist letter to the defendant on December 6, 2022, demanding that it immediately cease using the “Astellaz” mark. When the defendant failed to respond, a reminder notice was sent on August 20, 2023. Instead of complying, the defendant filed a counterstatement in response to the plaintiff’s Notice of Opposition on January 4, 2023, raising what the plaintiff termed as “false and frivolous” arguments without any supporting evidence.
During the pendency of the opposition proceedings, the plaintiff discovered in March 2023 that the defendant had launched a website under the domain name www.astellaz.com, registered on January 3, 2023, after the plaintiff had initiated legal action. Additionally, the defendant had started selling its products under the impugned mark on e-commerce platforms like IndiaMart and JustDial, further misleading consumers. Astellas Pharma conducted a test purchase and obtained a product invoice confirming that the defendant was actively trading under the infringing mark in Delhi.
On May 21, 2024, the High Court of Delhi issued summons in the suit and granted an ex parte ad interim injunction against the defendant, restraining it from using the mark “ASTELLAZ” or any other deceptively similar mark. Despite being duly served, the defendant failed to file a written statement within the prescribed period. Consequently, the court closed the defendant’s right to file a reply on October 8, 2024, and proceeded ex parte against it.
In its final analysis, the court relied on several precedents, including Satya Infrastructure Ltd. & Ors. vs Satya Infra & Estates Pvt. Ltd., where it was held that in cases where the defendant fails to contest the claims, an ex parte decree can be passed based on the plaintiff’s submissions. The court noted that the plaintiff had submitted ample evidence to establish that “ASTELLAS” was a well-known trademark with significant goodwill and reputation.
The court found that the defendant had copied the essential elements of the plaintiff’s mark, merely replacing the letter “S” with “Z” while keeping the pronunciation and structure almost identical. Given that both marks were used for pharmaceutical products, the likelihood of consumer confusion was high. The court also observed that the defendant’s adoption of a star-shaped logo similar to that of the plaintiff further indicated an intention to mislead the public.
Citing Cadila Healthcare Ltd. vs Cadila Pharmaceuticals Ltd., the court emphasised the heightened responsibility of pharmaceutical companies in trademark matters, as any confusion between drug brands could have serious health implications. The court held that the defendant’s use of the impugned mark amounted to both trademark infringement and passing off.
Based on these findings, the High Court of Delhi decreed the suit in favour of Astellas Pharma and granted a permanent injunction restraining the defendant from using the “ASTELLAZ” mark or any similar variant. The court also directed the defendant to remove all infringing listings from e-commerce platforms and discontinue the use of the website www.astellaz.com.
Additionally, the court instructed the plaintiff to submit a bill of costs to determine actual litigation expenses. The plaintiff’s representatives were directed to appear before the taxation officer on March 4, 2025, to assess the costs incurred. The date previously fixed for further proceedings—March 21, 2025—was cancelled in light of the final decree.
The court’s decision affirms that minor alterations to a registered mark do not absolve an infringer of liability, especially when the competing marks are used for identical goods. The case also highlights the importance of proactive enforcement in trademark disputes, as the plaintiff’s early legal action played a crucial role in securing relief.