Delhi High Court: In a case wherein suit was filed by New Balance Athletics Inc., a U.S. based Company seeking protection of its marks “NEW BALANCE” and “NB” against misuse by defendant, New Balance Immigration (P) Ltd. and apart from permanent injunction, damages, etc., against defendant, plaintiff also sought a declaration of its marks as well-known marks, Prathiba M. Singh, J.*, opined that the global reputation of plaintiff’s marks had been proved and plaintiff had submitted sufficient documentary evidence in support of the prayer for declaration as a well-known mark. The Court thus held that the marks “NEW BALANCE” and “NB” of plaintiff were, accordingly, declared as well-known marks. However, there shall be no monopoly on the words “New” and “Balance”, if separately used in respect of any other goods or services.
Background
Plaintiff was engaged in the business of design, manufacture, marketing and sale of footwear, readymade clothing and it claimed rights in the marks “NEW BALANCE”, letter combination “NB” and the “NB” device mark. The mark “NEW BALANCE” was used both as a mark and as a prominent feature of the corporate name of plaintiff’s Company and though the mark was initially adopted as “NEW BALANCE” in full form, over the years, the mark had come to be known as “NB”. Plaintiff used the website www.newbalance.com, as its platform for promoting and advertising its products. Defendant was a company engaged in the business of providing immigration and visa procurement services and it operated its business through its website with the domain name www.newbalanceimmigration.com. Defendant’s mark “NEW BALANCE” and the “NB” device mark had been made part of its corporate name.
Plaintiff submitted that it came to know about defendant’s mark in May 2022 and plaintiff issued cease and desist legal notices dated 18-05-2022 and 27-05-2022 to defendant, to make it aware of plaintiff’s right in the mark “NEW BALANCE” and in the device mark “NB”. However, defendant did not reply to the legal notices, leading to the filing of the present suit.
Comparison of plaintiff’s and defendant’s mark
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Plaintiff’s Marks |
Defendant’s Mark |
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NEW BALANCE |
NEW BALANCE |
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NB, |
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Analysis, Law, and Decision
The Court vide order dated 15-09-2022 had proceeded ex-parte after there was no appearance on behalf of defendant, even after being served through all modes of service and vide judgement dated 12-10-2022, the Court had granted an ad-interim injunction restraining defendant from using the “NEW BALANCE” and “NB” name and mark in respect of its immigration services.
The Court noted that Harshit Gupta, who was given power of attorney by plaintiff, claimed that plaintiff’s marks fulfilled all the factors laid down in Section 11(6) of the Trade Marks Act, 1999.
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Factor 1 being the knowledge or recognition of the trade mark in the relevant section of the public, including in India.
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Factor 2 being the duration, extent, and geographical area of any use of the trade mark.
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Factor 3 being duration, extent, and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibitions of goods or services to which trade mark applied.
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Factor 4 being duration and geographical area of any registration of or any application for registration of trade mark under this Act to the extent that they reflect use or recognition of the mark.
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Factor 5 being the record of successful enforcement of the rights in that mark, in particular the extent to which the trade mark had been recognised as a well-known trade mark by any court or Registrar under that record.
The Court relied on Hermes International v. Crimzon Fashion Accessories Pvt. Ltd., 2023 SCC OnLine Del 883 (‘Hermes International Case’), and opined that the factors outlined by the Single Judge under Section 11(6) of the Trade Marks Act, 1999 in Hermes International Case (supra) were the factors on which plaintiff had given evidence.
The Court noted that the mark “NEW BALANCE” was a unique combination of two distinctive words i.e., “New” and “Balance” which had no connection, allusion, or description of the products of the services offered by plaintiff and the logo was also quite distinctive. The Court opined that the global reputation of plaintiff’s marks had been proved and plaintiff had placed on record sufficient documentary evidence in support of the prayer for declaration as a well-known mark.
The Court relied on Disruptive Health Solutions (P) Ltd. v. Registrar of Trade Marks, 2022 SCC OnLine Del 2002, and Levi Strauss and Co. v. Interior Online Services Pvt. Ltd., CS(COMM) 657 of 2021, and held that the marks “NEW BALANCE” and “NB” of plaintiff were, accordingly, declared as well-known marks. However, the Court also held that there shall be no monopoly on the words “New” and “Balance”, if separately used in respect of any other goods or services.
[New Balance Athletics Inc. v. New Balance Immigration (P) Ltd., 2023 SCC OnLine Del 7009, decided on 02-11-2023]
Advocates who appeared in this case :
For the Plaintiff: Dushyant K. Mahant, Urfee Roomi, Janaki Arun, Anubhav Chhabra, Anuja Chaudhury, Alvin Antony, Jaskaran Singh, Ayush Dixit, Ritesh Kumar, Radhika Arora, Advocates
*Judgment authored by: Justice Prathiba M. Singh
Buy Trade Marks Act, 1999 HERE
