In May 2022, the Plaintiff came to know that the Defendant, New Balance Immigration Private Limited, a Noida-based company incorporated on March 30, 2022, was using marks “deceptively similar” to its ‘NEW BALANCE’ marks and ‘NB’ device marks. When the Defendant failed to revert to the cease-and-desist notices sent to it, the Plaintiff proceeded to file the present suit before the Delhi High Court seeking a permanent injunction. It was contended that the adoption of the impugned marks by the Defendant was “with a view to encash upon the immense goodwill and reputation” of the Plaintiff.

After noting that the Plaintiff was the registered proprietor of the said marks and making a comparison between the marks of the parties, the Court concluded that the mark and the domain name of the Defendant were “deceptively similar” to those of the Plaintiff. Further, it was held that the acts of the Defendant amounted to trademark infringement as per provisions of the Trade Marks Act, 1999, and passing off the services of the Defendant as that of the Plaintiff. Hence, the Court ruled in favour of the Plaintiff vide judgment dated June 1, 2023. Considering the continued use of the infringing marks by the Defendant despite the service of cease-and-desist notices in May 2022 and the issue of interim injunction in October 2022, and that the resolution to voluntarily wind up the Defendant company was passed only on May 30, 2023, the Court awarded costs to the tune of Rs. 4 lakhs.

The matter regarding the declaration of Plaintiff’s marks as well-known marks was pending to be decided on the day the said judgment was passed; the Plaintiff was directed to furnish evidence in support of the same. Accordingly, the Plaintiff made submissions regarding the registrations obtained in India under various classes since 1987, registrations obtained in other countries, the amount invested in advertising and promotions, etc. to depict compliance under Section 11(6) of the 1999 Act. The said Section provides the list of factors to be taken into account by the Registrar in determining whether a trademark is a well-known trademark.

Upon perusal of relevant case laws, and the evidence furnished, the Court declared the Plaintiff’s marks, ‘NEW BALANCE’ and ‘NB’ as well-known marks. However, it was clarified that this declaration would not operate as a bar on the use of the words ‘New’ or ‘Balance’ separately in respect of any other goods or services.

Remarks

Now that the Delhi High Court has declared the Plaintiff’s marks as well-known marks, the Plaintiff can approach the Trademarks Registry for the publication and inclusion of trademarks in the list of well-known trademarks. As per Rule 124 of the Trade Marks Rules, 2017, for such inclusion, an application has to be made electronically in Form TM-M and the applicable fee (i.e., Rs. 1 lakh for each mark) has to be paid. Section 11(8) of the 1999 Act specifies that if a trademark is “determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”. The same has been interpreted by the Delhi High Court in the case of Tata SIA Airlines Limited vs. Union of India [WP(C)-IPD 64/2021], to mean that the Registrar is not entitled to re-determine the status of the trademark declared by the Court as a well-known trademark.