Delhi High Court: A Single Judge Bench of Amit Bansal, J.* opined that the adoption of the mark ‘NEW BALANCE and device mark ‘NB’ by New Balance immigration (P) Ltd. (defendant) was dishonest as it failed to explain as to how it adopted the marks ‘NEW BALANCE’ and the ‘NB’ device marks, which were deceptively similar to New Balance Athletics Inc.’s (plaintiff) registered marks. Thus, the Court granted permanent injunction to the plaintiff for its marks ‘NEW BALANCE’ and ‘NB’ and further held that the plaintiff was entitled to costs of Rs. 4 lakhs which would be payable by the defendant.
Background
The plaintiff was engaged in the designing, manufacturing, marketing, and sales of footwear, readymade clothing in about 120 countries including India. The plaintiff first used the ‘NEW BALANCE’ mark as part of its corporate name in 1906 in the USA and since then, the ‘NEW BALANCE’ mark had been used as part of the plaintiff’s corporate name and the corporate names of the plaintiff’s companies around the world. The plaintiff was the registered proprietor of ‘NEW BALANCE’, ‘NB’, the ‘NB’ device mark and other marks that incorporated the ‘NEW BALANCE’ and ‘NB’ marks around the world including India. The use of the mark ‘NEW BALANCE’ began in India in 1986. The plaintiff owned various valid and subsisting registrations in India in respect of its ‘NEW BALANCE’ marks in Class 25 and other classes and had the domain name, ‘NEWBALANCE.COM’ registered in its favour in 1995.
The plaintiff submitted that in 2022, it came across the use of impugned marks by the defendant as a part of the defendant’s corporate name, wherein, the defendant was engaged in the business of offering immigration and visa procurement services. Thus, the plaintiff served a legal notice dated 12-5-2022 and reminder notice dated 27-5-2022 upon the defendant which was not responded to by the defendant. Thereafter, the plaintiff engaged an investigator, whose report revealed that the defendant in addition to using the ‘NEW BALANCE’ mark as a part of its corporate name and the ‘NB’ device mark as a part of its corporate logo, also used the impugned mark as a part of its domain name, ‘NEWBALANCEIMMIGRATION.COM’. Thus, the plaintiff filed the present suit.
Analysis, Law, and Decision
On 12-10-2022, this Court granted an ex parte injunction order in favour of the plaintiff thereby restraining the defendant from using the marks ‘NEW BALANCE’ and ‘NB’ in any manner including in relation to advertising of services or use as the defendant’s corporate name, corporate logo, or domain name.
The Court opined that the plaintiff had been able to prove that it was the registered proprietor of the ‘NEWBALANCE’ marks and ‘NB’ device marks in various classes and the said registrations were valid and subsisting. The plaintiff had also been able to show its goodwill and reputation in respect of the ‘NEWBALANCE’ marks, which extended beyond the plaintiff’s goods. The plaintiff has established statutory as well as common law rights on account of long usage of the ‘NEWBALANCE’ marks.
Comparison between the mark of the plaintiff and the defendant:
The Court opined that after comparing the mark of the plaintiff and of the defendant, it was clear that the defendant’s mark was deceptively similar to the plaintiff’s marks and the defendant was also using a ‘NB’ device mark that incorporated the plaintiff’s ‘NB’ mark in its entirety, which evoked an association with the plaintiff.
The Court noted that the defendant had used the impugned marks in its trade name i.e., ‘NEWBALANCEIMMIGRATION’, which was identical to the plaintiffs’ name, with an intent to springboard its business by drawing association with the plaintiff and its trademark and to ride on the goodwill and reputation of the mark of the plaintiff. Thus, the Court opined that “the acts of the defendant amounted to infringement of the trade marks of the plaintiff in terms of Section 29(4) of the Trade Marks Act, 1999 and passing off the services of the defendant as that of the plaintiff. The defendant had not only taken unfair advantage of the reputation and goodwill of the plaintiff’s mark but had also deceived unwary consumers of their association with the plaintiffs”.
The Court further opined that the domain name of the defendant was also deceptively similar to that of the plaintiff and was likely to deceive the public of its association with the plaintiff. The Court relied on Anugya Gupta v. Ajay Kumar, 2022 SCC OnLine Del 1922, wherein this Court held that “the right of a proprietor in a domain name was entitled to equal protection. The user traffic might be diverted due to the use of the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. A domain name might therefore have all the characteristics of a trademark and could result in an act of passing off”. Similarly, the use of ‘NEW BALANCE IMMIGRATION’ as a part of its trade name by the defendant was also likely to deceive unwary consumers of their association with the plaintiff.
The Court observed that the defendant had failed to explain as to how it adopted the marks ‘NEW BALANCE’ and the ‘NB’ device marks, which were deceptively similar to the plaintiff’s registered marks. Thus, the Court opined that the adoption of the marks by the defendant was dishonest. The Court held that the plaintiff had established a case of infringement as well as passing off, and was thus, entitled to a decree of permanent injunction. The Court further held that the plaintiff was entitled to costs of Rs. 4 lakhs payable by the defendant.
The matter would next be listed on 27-7-2023 before the Joint Registrar.
[New Balance Athletics Inc. v. New Balance Immigration (P) Ltd., 2023 SCC OnLine Del 3529, decided on 1-6-2023]
Advocates who appeared in this case :
For the Plaintiff: Dushyant K. Mahant, Urfee Roomi, Janaki Arun, Anubhav Chhabra, Advocates;
For the Defendant: Nidhi Gupta, Advocate.
*Judgment authored by: Justice Amit Bansal
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