Delhi High Court: Prathiba M. Singh, J.*, passed an order for permanent injunction, restraining defendants 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 Defendant 1’s Marks and marks that incorporated Defendant 1’s marks, or any other mark that was identical/deceptively similar to plaintiff’s, New Balance Athletics, Inc. marks. Further, the Court declared the shaded ‘N’ mark of plaintiff as a ‘well-known mark’.
Background
Plaintiff, a US based Company filed a suit seeking protection of its ‘NB’ shaded logo which was used in respect of footwear shoes and other related products. The mark ‘N’ was used on footwear since 1970’s when plaintiff launched its athletic shoes and over the years, plaintiff used the letter ‘N’ along with combination ‘NB’. Plaintiff incorporated its subsidiary companies, namely, New Balance IT Services India (P) Ltd. in 2007 and New Balance India (P) Ltd. in 2022 and was actively doing business in India.
Plaintiff found that Defendant 1, Jitender Kumar, trading as J.K. Enterprises was manufacturing and selling various footwear with a similar logo and with the ‘N’ logo as well. Defendant 1 was the main manufacturer and Defendants 2 to 4 were the sellers of Defendant 1’s footwear. Plaintiff first learnt of defendants through an application which was filed in Trade Mark Registry for ‘ES EARTH SKY’ Device mark 
in Class 25 for “clothing, footwear, headwear”. Another application was also found by plaintiff for logo 
, which Defendant 1 applied for in Class 25.
Plaintiff after a detailed investigation, sent a legal notice dated 09-03-2023 to Defendant 1 and in response to which Defendant 1 agreed that he had used the ‘NB’ mark mistakenly and he had adopted a new device mark. However, Defendant 1 continued to use the impugned marks thereafter. Plaintiff filed a request to Trade Mark Registry for withdrawal of the trade mark application and despite undertakings given by Defendant 1, the marks were not withdrawn, and Defendant 1 continued to use the marks. Plaintiff, then filed the present suit seeking an injunction.
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Analysis, Law, and Decision
The Court vide order dated 28-04-2023 granted an interim injunction and appointed local commissioners to visit defendants’ premises and make inventory of infringing materials. The Court observed that the local commissioners’ report showed that there was large scale use of impugned ‘ES’ logo in shaded manner and the ‘N’ mark in Defendant 1’s premises and despite local commissioners’ execution and injunction, which was passed, defendants had continued to use the marks.
The Court noted that defendants had applied for a new device mark ‘EARTH STEP’ in Class 25 they claimed that they had given up ‘ES’ new logo as well and they were using the ‘Earth Step’ mark in full word form. The Court further noted that Defendant 1 had agreed to give up the impugned logos and use of letter ‘N’ and had stated that he only wished to use the mark ‘EARTH STEP’ and if at any point he designed a logo, the same shall not be similar to plaintiff’s marks or logos.
The Court thus passed an order for permanent injunction, restraining defendants and all others acting for and on behalf of defendants, 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 Defendant 1’s Marks and marks that incorporated Defendant 1’s marks, or any other mark that was identical/deceptively similar to plaintiff’s marks.
The Court opined that the factors that were required to be established for proving that plaintiff’s mark was well-known had been established and insofar ‘N’ shaded logo was concerned, a large scale global and extensive use of ‘N’ shaded logo of plaintiff and the registration of the ‘N’ shaded logo in India since 1997 coupled with enforcement of the said mark and logo, left no manner of doubt that the said writing style and script in respect of footwear was exclusively associated with plaintiff.
The Court relied on Hermes International v. Crimzon Fashion Accessories (P) Ltd., 2023 SCC OnLine Del 883 wherein the factors relevant for declaring a mark as ‘a well-known mark’ under Section 11(6) of the Trade Marks Act, 1999 were outlined. The Court thus declared the shaded ‘N’ mark of plaintiff as a ‘well-known mark’.
[New Balance Athletics Inc. v. Jitender Kumar, 2023 SCC OnLine Del 8061, decided on 12-12-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiff: Urfee Roomi, Janaki Arun, Anubhav Chhabra, Anuja Chaudhury, Alvin Antony, Ritesh Kumar, Jaskaran Singh, Ayush Dixit, Radhika Arora, Advocates
For the Defendants: Pardeep Dhingra, Archit Relan, Pradeep Kumar, Advocates
Buy Trade Marks Act, 1999 HERE
