Astellas Pharma Inc. vs. Astellaz Pharmaceuticals

Astellas Pharma Inc. Vs. Astellaz Pharmaceuticals

Date of Order: 3rd February 2025

Case No.: CS(COMM) 426/2024 with I.A. 2878/2025

Neutral Citation: 2025:DHC:793

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts:

• The plaintiff, Astellas Pharma Inc., a multinational pharmaceutical corporation, is the registered proprietor of the trademark "ASTELLAS" under Class 5.
• The defendant, Astellaz Pharmaceuticals, applied for the trademark "ASTELLAZ" under Class 35 for “trading of medicine.”
• The defendant also registered the domain name www.astellaz.com and was found selling infringing products on e-commerce platforms like IndiaMart and JustDial.
• The plaintiff opposed the defendant's trademark application and issued cease-and-desist letters, but the defendant did not respond.
• The plaintiff filed a suit seeking a permanent injunction against the defendant for trademark infringement and passing off.

Issues:

1. Whether the defendant's use of "ASTELLAZ" constitutes trademark infringement of the plaintiff's mark "ASTELLAS".
2. Whether the defendant’s actions amount to passing off.
3. Whether the defendant should be restrained from using the infringing mark.

Reasoning and Analysis of the Judge:

• The defendant did not file a written statement or enter an appearance despite being served.
• The court, relying on Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd., held that the case does not require trial as the defendant failed to contest the suit.
• The marks "ASTELLAS" and "ASTELLAZ" are structurally, phonetically, and visually similar, which enhances the likelihood of confusion among consumers.
• The defendant's substitution of 'S' with 'Z' was a mere attempt to imitate the plaintiff’s mark.
• The defendant was using a deceptively similar trademark for identical purposes, constituting trademark infringement and passing off.
• The defendant's lack of response to the injunction order indicated that they had no defense.

Decision of the Judge:

• A decree of permanent injunction was granted against the defendant, restraining them from using "ASTELLAZ" or any similar mark.
• The court directed the plaintiff to file a bill of costs to determine litigation expenses.
• The next hearing on 21st March 2025 was canceled, and the case was concluded with an injunction order in favor of the plaintiff.

This ruling reaffirms the importance of trademark protection and sets a precedent against deceptively similar marks in the pharmaceutical sector.