Delhi High Court: In a case wherein the plaintiff, New Balance Athletics Inc. alleged infringement, by the defendant, Nine Plus Shoes (P) Ltd. of the plaintiff’s registered trade marks 
, 
and 
, C. Hari Shankar, J., granted permanent injunction to the plaintiff, thereby restraining the defendant from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the internet or otherwise, footwear and any other similar/related/allied/cognate goods bearing the defendant’s ‘N’ Mark and marks that incorporated the defendant’s ‘N’ Mark, or any other mark that was identical/deceptively similar to the plaintiff’s ‘N’ Marks , and . The Court further held that whether the plaintiff’s registered trade marks , and , were “well-known” trade marks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (’Act’), would be decided on 16-08-2023.
Background
The plaintiff was a company incorporated in the USA and claimed to have commenced business in 1906, through its predecessor-in-interest New Balance Arch Support Company (NBASC), which was engaged in the manufacture and sale of footwear. The plaintiff stated that it had sponsored several international events, including the Olympic teams of Ireland and Chile at the 2016 Rio Olympics, apart from others, in which the plaintiff’s footwear were worn by the athletes and players.
The plaintiff submitted that the defendant was using the letter ‘N’ on its shoes/footwear in a slanted fashion, similar to the manner in which the plaintiff represents the letter ‘N’. Inasmuch as these marks were used on identical goods, the plaintiff submitted that there was every likelihood of confusion and deception in the mind of a customer of average intelligence and imperfect recollection.
Comparison of the footwear figuring the plaintiff’s and defendant’s logo
|
Plaintiff's ‘N’ Marks |
Defendant's ‘N’ Marks |
|
|
|
Analysis, Law, and Decision
At the time of issuing summons in the suit, on 23-08-2022, this Court granted an ex parte ad interim injunction against the defendant from manufacturing, selling, offering for sale any shoes, footwear or cognate or allied products bearing the ‘N’ device marks, ‘New Balance’ or the ‘NB’ logo belonging to the plaintiff. This order was modified on 05-04-2023 by allowing the defendant to use the word “NINE” but not to use the letter ‘N’ in a manner similar to the manner in which the plaintiff was using the said letter. That interim injunction had been continued from time to time and remained in force as on date.
The Court granted permanent injunction to the plaintiff, thereby restraining the defendant from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly, and whether on the internet or otherwise, footwear and any other similar/related/allied/cognate goods bearing the defendant’s ‘N’ Mark and marks that incorporated the defendant’s ‘N’ Mark, or any other mark that was identical/deceptively similar to the plaintiff’s ‘N’ Marks , and .
The Court opined that the shoes, which were found in the premises of the defendant and seized by the Local Commissioner, the defendant was permitted to remove, from the said shoes, the infringing “N” mark or any other mark which was deceptively similar to the plaintiff’s registered trade marks, subject to the right of the defendant to use the word “NINE”. Thereafter once the infringing marks were removed, the defendant shall be at liberty to dispose of the said shoes/footwear in any manner as the defendant deemed appropriate.
The matter would next be listed on 16-08-2023, to decide whether the plaintiff’s registered trade marks , and , were “well-known” trade marks within the meaning of Section 2(1)(zg) of the Act.
[New Balance Athletics Inc. v. Nine Plus Shoes (P) Ltd., 2023 SCC OnLine Del 4532, decided on 31-7-2023]
*Judgment authored by: Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiff: Dushyant Mahant, Urfee Roomi, Janaki Arun, Alvin Antony, Advocates;
For the Defendant: Sanjeev Sagar, Nazia Parveen, Advocates.
Buy Trade Marks Act, 1999 HERE
