Delhi High Court Declares “New Balance” And “NB” Trademarks Of US-Footwear Apparel Brand As 'Well-Known'

Justice Prathiba M. Singh of the Delhi High Court recently declared footwear and apparel brand New Balance’s marks as well-known. It was clarified, however, that there shall be no monopoly in the words “New” and “Balance” if used separately in respect of any other goods or services.

“…the mark “NEW BALANCE” is a unique combination of two distinctive words i.e. “New” and “Balance” which have no connection, allusion or description of the products of the services offered by the Plaintiff. The logo [NB] is also quite distinctive and has been repeatedly enforced by the Court orders against misuse. The global reputation of the Plaintiff’s marks have been proved on record”, the court said.

Last year, the court had proceeded ex-parte against the defendant, which was stated to be using the “NB” name and mark in respect of its immigration services. Vide a summary judgment, the suit was decreed, but the matter remained pending w.r.t. prayer for the well-known declaration, as the court directed plaintiff to file evidence.

Accordingly, the plaintiff led evidence through its Power of Attorney to establish that the “New Balance” marks fulfilled all factors laid down u/s 11(6) of the Trade Marks Act for being declared well-known, viz.

(i) knowledge or recognition of the trade mark in the relevant section of the public, including in India

(ii) duration, extent and geographical area of use of the trade mark

(iii) duration, extent and geographical area of any promotion of the trade mark

(iv) duration and geographical area of any registration of or any application for registration of trade mark under this Act to the extent that they reflect use or recognition of the mark

(v) record of successful enforcement of the rights in the mark

In arriving at its conclusion, the court referred to Disruptive Health Solutions v. Registrar of Trade Marks, where test of distinctiveness was explicated, and Levi Strauss and Co. v. Interior Online Services Pvt. Ltd., where after noting the extent of reputation of the plaintiff’s mark, well-known status was granted.

Mr. Dushyant K. Mahant, Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Anubhav Chhabra, Ms. Anuja Chaudhury, Mr. Alvin Antony, Mr. Jaskaran Singh, Mr. Ayush Dixit, Mr. Ritesh Kumar and Ms. Radhika Arora, Advocates appeared for plaintiff

None appeared for defendant

Case Title: New Balance Athletics Inc. v. New Balance Immigration Private Limited

Citation: 2023 LiveLaw (Del) 1062

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