IMPORTANT POINT
Trademark infringement and passing off established due to defendants' sale of counterfeit products, leading to a decree in favor of the plaintiff.

JUDGMENT :

Mini Pushkarna, J.

1. The present suit is filed seeking permanent injunction restraining trademark infringement, passing off of trademark, acts of unfair competition, seeking damages/rendition of accounts, freezing assets, delivery up and other reliefs. The same is sought on the ground that there are unknown defendants who are making sale of counterfeiting products, inter alia using and thereby infringing plaintiff’s registered trademarks, i.e. and “NEW BALANCE”.

2. The case, as canvassed by the plaintiff, is as follows:

2.1 The plaintiff first used the term ‘NEW BALANCE’ as part of its corporate name in the year 1906 and as a trademark for its retail services in 1951 in United States of America. Further, the plaintiff has several subsidiary companies all across the world, which use the term ‘NEW BALANCE’ as the corporate name, the Indian subsidiary being ‘New Balance IT Services India Private Limited’. Moreover, the combination of letters ‘NB’ in one form or another, is being used since the 1970s and the device marks were first used as trademarks on footwear in the year 1987 across the world. 2.2 The plaintiff under their marks sells products in over 120 countries, along with employing 8000 people worldwide. Furthermore, the plaintiff has spent substantial amounts on advertising and earned revenue in thousands of Crores of Rupees selling goods under their marks. The promotion campaign of the plaintiff also includes involvement of various Indian and Foreign celebrities.

2.3 The plaintiff in India has been engaged continuously as early as the year 1986, and currently is selling products through retail stores and various e-commerce websites, i.e. Amazon.in, Myntra.in, Ajio.com and Flipkart.in.

2.4 The plaintiff has successfully enforced its rights in relation to its trademarks in India on several occasions, wherein, the Courts have granted ex-parte ad interim injunctions in favor of the plaintiff.

2.5 The defendant nos. 1 & 11 own and operate the Impugned Website, i.e. www.luxurytag.in and offer for sale counterfeit products, such as foot wears with the plaintiff’s registered marks, without any due authorization. Further, the said defendants on their website admit the products sold by them as not original and “high quality products which look similar to the originals”. Moreover, the said defendants sell counterfeit/fakes of plaintiff’s products, as well as, other well-known brands.

2.6 In February, 2023, a representative of the plaintiff discovered the Impugned Website and placed an order for the footwear bearing the plaintiff’s marks from the said website. Upon receipt of the product from the Impugned Website, the plaintiff identified their marks being used and ascertained the product to be a fake/counterfeit.

2.7 The website located at www.luxurytag.in , is a rogue website, as the same is being used for the purpose of marketing, offering for sale and selling counterfeit foot wear bearing the plaintiff’s marks. Such unfair and dishonest acts of the defendants amount to infringement of the plaintiff’s trademark rights, passing off and unfair competition. Thus, the present suit has been filed.

3. I have heard the learned counsel for the parties and perused the record.

4. It is noted that initially due to the unknown identities of defendant no. 1, the same was stated to be as ‘Ashok Kumar’ as the said defendant was operating through the Impugned Website, www.luxurytag.in. Subsequently, by way of an application for amendment of plaint and impleadment, i.e. IA/15834/2023 under Order I Rule 10 (2) of the Code of Civil Procedure, 1908 (“CPC”), filed by the plaintiff, on account of information provided by the other defendants, this Court vide order dated 22nd August, 2023 allowed the amendments and impleaded Mr. Indramani Sahu as defendant no. 1, due to his number being listed as the owner in the Impugned Website and Mr. Jagabandhu Sahoo as defendant no. 12, due to him being the beneficiary of the UPI Id for transactions through the I