Trademark Infringement And Passing Off: The Daiwa Pharmaceuticals Case

Posted On - 24 May, 2024 • By - King Stubb & Kasiva


The case at hand involves the Plaintiff seeking an injunction against Defendants to prevent the unauthorized use of the trademarks ‘Daiwa’. The Plaintiff argues that their extensive use of the trademark ‘Daiwa’ and its association with their pharmaceutical products have garnered significant reputation and goodwill worldwide, including in India. The Plaintiff contends that the Defendants’ use of similar marks may lead to consumer confusion and constitute an act of passing off, implying an association with the Plaintiff’s well-known brand.

Applicant’s contention:

The Plaintiff in this Interim Application is seeking an injunction to prevent Defendant and its affiliates, directors, employees etc from using the trademarks ‘Daiwa’ in any way. The Plaintiff argued that the Plaintiff has been using the trademark ‘Daiwa’ and other marks containing ‘Daiwa’ extensively, gaining significant reputation and goodwill worldwide, including in India. These trademarks are exclusively associated with the Plaintiff’s products. Plaintiff further contends that consumers familiar with the Plaintiff’s products and trademarks might confuse or be deceived by the Defendant’s identical or similar products and website, assuming they are affiliated with or endorsed by the Plaintiff. He asserts that the Defendant’s use of the impugned marks and domain name may lead to the misperception that their products and business are linked to the Plaintiff’s well-known products and business, constituting an act of passing off.

Plaintiff, argued that it being a globally recognized company, is well-known within the international and Indian pharmaceutical industry. Pharmaceutical companies, manufacturers, wholesalers, distributors, and other entities in the industry associate the trading name ‘Daiwa Pharmaceutical’ or the house mark ‘Daiwa’ with the Plaintiff only. When assessing the likelihood of confusion, the relevant market includes entities engaged in the trading of pharmaceutical products as well as the consuming public. This means that the perception of these industry players and consumers is crucial in determining whether there is potential confusion between the Plaintiff’s products and those of the Defendant.


The Court emphasized that a trademark, being a proprietary right, deserves protection, and where the Plaintiff is the prior user of the disputed marks, the balance of convenience naturally leans towards the Plaintiff. It was acknowledged that failure to grant interim relief would cause irreparable harm to the Plaintiff. The Court also found that the Plaintiff had established a prima facie case that the Defendant had passed off its impugned mark as that of the Plaintiff’s registered mark, as the Defendant’s mark was visually, structurally, phonetically, and literally indistinguishable from the Plaintiff’s mark.

Consequently, Defendant was ordered to cease using the impugned mark. The balance of convenience was deemed to favour the Plaintiff, as Defendant’s adoption of the impugned mark suggested an attempt to dishonestly create a connection between the Plaintiff and themselves. Therefore, the balance of convenience was weighed in favour of the Plaintiff and against the Defendants.


In conclusion, the case presented highlights the significance of trademark protection and the concept of transborder reputation in Indian jurisprudence. The Plaintiff sought an injunction against Defendant to prevent the unauthorized use of the trademarks ‘Daiwa’, arguing that they have established significant reputation and goodwill worldwide, including in India. The Plaintiff’s contention that consumers may be confused or deceived by the Defendant’s use of similar marks underscores the importance of protecting established brand identities.