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2023 Supreme(Del) 5667
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
New Balance Athletics Inc. - Appellant
Versus
New Balance Immigration Private Limited - Respondent
CS(COMM) 444 of 2022 & I.A. 11940 of 2023
Decided On : 02-11-2023
Mr. Dushyant K. Mahant, Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Anubhav Chhabra, Ms. Anuja Chaudhury, Mr. Alvin Antony, Mr. Jaskaran Singh, Mr. Ayush Dixit, Mr. Ritesh Kumar and Ms. Radhika Arora, Advocates, for the Appellant.
IMPORTANT POINT
The central legal point established in the judgment is the declaration of the marks 'NEW BALANCE' and 'NB' as well-known marks under Section 11(6) of the Trade Marks Act, 1999.
Headnote:
NEW BALANCE - Trademark Protection - Trade Marks Act, 1999 - Section 11(6)
Fact of the Case:
The Plaintiff, New Balance Athletics Inc., sought protection of its marks 'NEW BALANCE' and 'NB' against misuse by the Defendant, New Balance Immigration Private Limited. The Plaintiff also sought a declaration of its marks as well-known marks.
Finding of the Court:
The Court found in favor of the Plaintiff, granting an ad-interim injunction and subsequently decreeing the suit in favor of the Plaintiff. The Court also declared the marks 'NEW BALANCE' and 'NB' as well-known marks.
Issues: Misuse of trademarks, well-known mark declaration
Ratio Decidendi: The Court relied on the evidence provided by the Plaintiff, including the extensive use, promotion, and enforcement of the marks, to declare them as well-known marks under Section 11(6) of the Trade Marks Act, 1999.
Final Decision: The suit was decreed in favor of the Plaintiff, and the marks 'NEW BALANCE' and 'NB' were declared as well-known marks, with a clarification that there shall be no monopoly on the words 'New' and 'Balance' if separately used in respect of any other goods or services.
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by New Balance Athletics Inc. a U.S. based Company seeking protection of its marks 'NEW BALANCE' and 'NB' against misuse by the Defendant- New Balance Immigration Private Limited. Apart from permanent injunction, damages etc., against the Defendant, the Plaintiff also seeks a declaration of its marks as well-known marks.
3. The brief background is that the Plaintiff is engaged in the business of design, manufacture, marketing and sale of footwear, readymade clothing. It claims rights in the marks 'NEW BALANCE', letter combination 'NB' and the 'NB' device mark which are extracted hereinbelow:-
4. The Plaintiff is a company established in the year 1906 in the USA, and the mark 'NEW BALANCE' is used both as a mark as also as a prominent feature of the corporate name of the Plaintiff's Company. Though the mark was initially adopted as 'NEW BALANCE' in full form, over the years, the mark has come to be known as 'NB'. The mark 'NB' is also described on the footwear and apparels which are manufactured by the Plaintiff in the US since 1974.
5. The business of the Plaintiff has expanded considerably for more than a century and, presently, the products are stated to be sold in more than 120 countries in the world including in India through retailer stores, departmental stores and e-commerce platforms.
6. The Plaintiff claims to engage more than 25 manufacturers across the world to manufacture footwear and readymade clothing, and also employs more than 8000 employees. The Plaintiff also claims to have granted its Indian licensee a license to use the Plaintiff's marks in India. Since 2016, several stores has been opened in Delhi, Chandigarh and Lucknow. It also has subsidiaries which are incorporated in several countries in the world including the United States of America, United Kingdom, Hong Kong, Singapore, Australia, New Zealand, Mexico, Canada and South Africa.
7. The use of the mark 'NEW BALANCE' dates back to the year 1986 in India for footwear and in retail services, the use dates back to the year 1972. The mark is also registered in several countries in the world including in India.
The details of the registered marks in India are set out below:
8. The Plaintiff uses the website www.newbalance.com, as its platform for promoting and advertising its products. The Plaintiff also operates various social media platforms like Facebook, Twitter, Instagram etc.
9. The sales figures of the Plaintiff are claimed to be more than 2.7 billion in 2020 and the marketing figures are more than 244 million dollars in 2020.
10. According to the Plaintiff, it sponsors a large number of well-known globally renowned sporting events and a number of celebrities also promote and endorse the Plaintiff's products.
11. The Defendant- New Balance Immigration Private Limited, is a company engaged in the business of providing immigration and visa procurement services. The Defendant operates its business through its website with the domain name www.newbalanceimmigration.com.The Defendant's mark 'NEW BALANCE' as also the 'NB' device mark has been made part of its corporate name. The same has been extracted below:
12. The case of the Plaintiff is that it came to know about the Defendant's mark in May, 2022. The Plaintiff issued cease and desist legal notices dated 18th May, 2022 and 27th May, 2022 to the Defendant, to make it aware of the Plaintiff's right in the mark 'NEW BALANCE' as also in the device mark 'NB'. However, the Defendant did not reply to the legal notices, leading to the filing of the present suit. A comparative chart of the Plaintiff's and Defendant's mark is as under:
13. In this suit, initially, the Court vide order dated 15th September, 2022 had proceeded ex parte after there was no appearance on behalf of the Defendant, even after being served through all modes of service. Vide judgement dated 12th October, 2022, the Court had granted an ad-interim injunction res
