New Balance Athletics Inc. v. New Balance Immigration (P) Ltd
In the case of New Balance Athletics Inc. v. New Balance Immigration (P) Ltd, the plaintiff, engaged in the footwear and clothing business, claimed rights in the marks "NEW BALANCE" and "NB." The defendant, a company in the immigration services sector, was using similar marks. The court issued an ex-parte order and later an ad-interim injunction against the defendant for using the plaintiff's marks in relation to immigration services. The plaintiff presented evidence under Section 11(6) of the Trade Marks Act, 1999, highlighting factors like global reputation, duration of use, and successful enforcement. Relying on precedent cases, the court declared the marks "NEW BALANCE" and "NB" as well-known marks, emphasizing the uniqueness and distinctiveness of the plaintiff's marks. The decision underscores the need to protect well-known trademarks and serves as a precedent for recognizing and safeguarding the global reputation of trademarks.
New Balance Athletics Inc. v. New Balance Immigration (P) Ltd
SCC Online Del 7009
Decided on 02-11-2023
Plaintiff was engaged in the business of design, manufacture, marketing and sale of footwear, and 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 the 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. The defendant’s mark “NEW BALANCE” and the “NB” device mark had been made part of its corporate name. The plaintiff submitted that it came to know about the defendant’s mark in May 2022 and the plaintiff issued cease and desist legal notices dated 18-05-2022 and 27-05-2022 to the defendant, to make it aware of the plaintiff’s right in the mark “NEW BALANCE” and in the device mark “NB”. However, the defendant did not reply to the legal notices, leading to the filing of the present suit.
Analysis, Law, and Decision
On 15-09-2022, the Court issued an ex-parte order as the defendant failed to appear despite being served through all modes of service. On 12-10-2022, the Court granted an ad-interim injunction restraining the defendant from using the “NEW BALANCE” and “NB” name and mark in relation to its immigration services. Harshit Gupta, who was given power of attorney by the plaintiff, claimed that the plaintiff’s marks fulfilled all the factors laid down in Section 11(6) of the Trade Marks Act, 1999. These factors include the knowledge or recognition of the trademark in the relevant section of the public, including in India, the duration, extent, and geographical area of any use of the trademark, the duration, extent, and geographical area of any promotion of the trademark, including advertising or publicity and presentation at fairs or exhibitions of goods or services to which the trademark applied, the duration and geographical area of any registration of or any application for registration of the trademark under this Act to the extent that they reflect use or recognition of the mark, and the record of successful enforcement of the rights in that mark, in particular the extent to which the trademark had been recognized as a well-known trademark 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, and opined that the factors outlined by the Single Judge under Section 11(6) of the Trade Marks Act, 1999 in Hermes International Case were the factors on which the 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 the plaintiff, and the logo was also quite distinctive. The Court opined that the global reputation of the plaintiff’s marks had been proved, and the 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 the plaintiff were 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.
Conclusion
The Court granted an injunction in the case of New Balance Athletics Inc. v. New Balance Immigration (P) Ltd, protecting the reputation and distinctiveness of the plaintiff's marks. The decision emphasizes the importance of safeguarding well-known trademarks from potential infringement and serves as a precedent for recognizing and protecting the global reputation of trademarks.
