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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of decision: 2^ndNovember, 2023

+

CS(COMM) 444/2022 & I.A. 11940/2023

NEW BALANCE ATHLETICS INC.

..... Plaintiff

Through:

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 (M: 9818098835).

versus

NEW BALANCE IMMIGRATION

PRIVATE LIMITED

..... Defendant

Through:

None.

CORAM:

JUSTICE PRATHIBA M. SINGH

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

Digitally Signed

By:DHIRENDER KUMAR

Signing Date:03.11.2023

18:38:35

Signature Not Verified

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.

Digitally Signed

By:DHIRENDER KUMAR

Signing Date:03.11.2023

18:38:35

Signature Not Verified

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.

Digitally Signed

By:DHIRENDER KUMAR

Signing Date:03.11.2023

18:38:35

Signature Not Verified

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 extr