Delhi High Court: A suit was filed by New Balance Athletics (plaintiff) seeking permanent injunction restraining trade mark infringement, passing-off, and acts of unfair competition, arising out of the defendant’s manufacturing, marketing, and sale of footwear bearing the marks, N Device, K Device and 550, which are nearly identical and/or deceptively similar to the plaintiff’s N Device and 550 marks. Mini Pushkarna, J., restrained the defendant from any further use of marks deceptively similar to New Balance’s trademarks.
The plaintiff is a globally recognized footwear manufacturer, and the defendant is trading as Kiran Shoe Company. The plaintiff alleging trademark infringement, passing off, and unfair competition due to the defendant’s manufacturing, marketing, and sale of footwear bearing marks similar to New Balance’s “N” and “550” marks, potentially deceiving consumers due to their resemblance to New Balance’s established trademarks. New Balance asserted that their marks, first used in the U.S. in the 1970s and registered in India since 1987, had gained significant goodwill and were exclusively associated with their brand. Alleging that Khubchandani’s use of similar marks constituted trademark infringement, New Balance presented evidence to support claims that the defendant’s products were indeed counterfeits of their own.
Upon discovery of defendant’s use of similar marks in May 2024, New Balance conducted a private investigation, revealing that the defendant sold footwear with the disputed marks through his website and multiple e-commerce platforms. The plaintiff claimed that defendant’s use of the “N” and “550” marks was intended to capitalize on New Balance’s brand reputation. On 28-05-2024, the Court issued an ex parte interim injunction, restraining defendant from manufacturing or selling footwear with these marks. A Local Commissioner was appointed to conduct a raid at defendant’s premises, where a substantial number of counterfeit products bearing New Balance’s trademarks were seized, along with additional counterfeit products under other brands.
The defendant subsequently submitted an affidavit, claiming cessation of his use of the infringing marks and pledging not to use or register similar marks in the future. However, New Balance argued that defendant’s long-standing counterfeit operations, misleading representations, and failure to provide plausible reasons for adopting the disputed marks highlighted his intentional infringement. During proceedings on 07-10-2024, the Court noted that defendants had undertaken not to deal in counterfeit products resembling New Balance’s trademarks.
On 21-10-2024, the defendant agreed to suffer a decree of injunction, halting further dealings in infringing goods. Despite this, New Balance pressed for damages and costs incurred in investigating the matter, filing fees, and appointing the Local Commissioner. The Court recognized that the defendant had no credible reason for adopting the “N” and “550” marks other than to boost sales by imitating New Balance’s brand identity, which was a deliberate act of bad faith.
Thus, the Court upheld the injunction, restraining defendants from any further use of marks deceptively similar to New Balance’s trademarks reinforcing the plaintiff’s right to exclusive use of its registered trademarks and set a precedent for awarding costs in cases of bad-faith infringement.
[New Balance Athletics v Pulkit Khubchandani, 2024 SCC OnLine Del 7469, decided on 21-10-2024]
Advocates who appeared in this case :
Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Ayush Dixit, Mr. Jaskaran Singh and Ms. Chahat Bhatia, Advocates for plaintiff
Mr. Sanjeev Singh and Mr. Sanchit Bhushan, Advocates for defendant
