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 Signature Not Verified Digitally Signed CS(COMM)444/2022 Page 1 of 11 claims rights in the marks “NEW BALANCE”, letter combination “NB” and the “NB” device mark which are extracted hereinbelow:-

4. The Plaintiffis acompanyestablishedinthe year 1906intheUSA,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 markhas cometobe known as “NB”.The mark “NB”is also described on the footwearandapparelswhicharemanufacturedbythePlaintiffintheUSsince

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 countriesintheworld includinginIndiathroughretailerstores,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 morethan8000employees.ThePlaintiffalsoclaimstohavegranteditsIndian 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 subsidiarieswhichareincorporatedinseveralcountriesintheworldincluding the United States of America, United Kingdom, Hong Kong, Singapore, Australia, New Zealand, Mexico, Canada and South Africa.

Signature Not Verified Digitally Signed CS(COMM)444/2022 Page 2 of 11

7. The use of the mark “NEW BALANCE” dates back to the year 1986 inIndiaforfootwearandinretailservices,theusedatesbacktotheyear1972. ThemarkisalsoregisteredinseveralcountriesintheworldincludinginIndia.

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.

Signature Not Verified Digitally Signed CS(COMM)444/2022 Page 3 of 11

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 procurementservices.TheDefendantoperatesitsbusinessthroughitswebsite 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:

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13. In this suit, initially, the Court vide order dated 15th September, 2022 had proceeded ex parte after there was no app