Trademark infringement and passing off can be established based on the use of deceptively similar marks and failure to comply with interim injunction orders.

JUDGMENT

Amit Bansal, J. (Oral)

I.A. 9041/2023 (u/S 151 of the CPC r/w O-IX R-7 of the CPC)

1. The present application has been filed on behalf of the defendant under Section 151 read with Order IX Rule 7 of the Code of Civil Procedure, 1908 (CPC).

2. Despite service, none appeared on behalf of the defendant and hence, the defendant was proceeded against ex parte on 15th September, 2022. Thereafter, on 12th October, 2022 the application for interim injunction filed on behalf of the plaintiff, under Order XXXIX Rules 1 and 2 of the CPC was allowed and an ex parte judgment was passed in favour of the plaintiff restraining the defendant from using the marks `NEW BALANCE' and `NB' in any manner including in relation to advertising of services or use as the defendant's corporate name, corporate logo or domain name.

3. Counsel for the defendant submits that the defendant could not appear on the hearing on 15th September, 2022 and 12th October, 2022 due to personal exigencies as he was occupied with the medical treatment of his uncle, who was suffering from cancer and who expired on 15th October, 2022. Subsequently, counsel appeared on behalf of the defendant on 23rd January, 2023. On 8th May, 2023, the present application was filed on behalf of the defendant.

4. Counsel for the plaintiff does not seriously contest the present application.

5. Accordingly, the present application is allowed and the defendant is permitted to participate in the suit from the date it entered appearance i.e., 23rd January, 2023.

6. The application stands disposed of.

I.A. 2807/2023 (O-XI R-1(5) of the Commercial Courts Act)

7. The present application has been filed on behalf of the plaintiff seeking to place on record additional documents.

8. Sometime in February, 2023, the plaintiff came to know that defendant is continuing to use the impugned marks as a part of its corporate name, corporate logo as well as domain name.

9. Accordingly, the present application was filed to place on record material to show the user of the impugned marks by the defendant even after passing of injunction order dated 12th October, 2022.

10. No reply has been filed on behalf of the defendant to the present application.

11. For the reasons stated, the application is allowed and the aforesaid documents are taken on record.

I.A. 1264/2023 (O-XIII-A R-3 & 6(1)(a) of the CPC), I.A. 1336/2023 (O- XXXIX R-2A of CPC) & CS(COMM) 444/2022

12. The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the trademarks of the plaintiff, passing off its goods and services as that of the plaintiff's and other ancillary reliefs.

PLEADINGS IN THE PLAINT

13. The case set up by the plaintiffs in the plaint is as follows:

13.1. The plaintiff company incorporated under the laws of USA, is engaged in the designing, manufacturing, marketing and sales of footwear, readymade clothing in about 120 countries including India

13.2. The plaintiff first used the `NEW BALANCE' mark as part of its corporate name in 1906 in the United States of America and since then, the `NEW BALANCE' mark has been used as part of the plaintiff's corporate name and the corporate names of the plaintiff's companies around the world.

13.3. The plaintiff is the registered proprietor of `NEW BALANCE', `NB', the `NB' device mark and other marks that incorporate the NEW BALANCE and NB marks around the world including India. The use of the mark `NEW BALANCE' began in India in 1986.

13.4. Pursuant to a franchise agreement in the year 2016, the plaintiff authorised an Indian party to operate retail stores throughout India. The plaintiff's products are being sold through various e-commerce platforms such as amazon.in, myntra.in, etc. Additionally the plaintiff has its presence on various social media platforms.

13.5. The plaintiff owns various valid and subsisting registrations in India in respect of its `NEW BALANCE' marks in Class 25 and other classes, details of which are g