Delhi High Court Declared ‘New Balance’ And ‘NB’ Trademark Of US-Footwear Apparel Brand As ‘Well-Known’

The Delhi High Court in the case New Balance Athletics Inc. v. New Balance Immigration Private Limited observed and has declared the footwear and apparel brand New Balance’s marks as well-know.
The bench headed by Justice Prathiba M. Singh in the case observed and has stated that there shall be no monopoly in the words ‘New’ and ‘Balance’ if it is used separately in respect of any other goods or services.
The court stated that the new mark ‘NEW BALANCE’ is a unique combination of two distinctive words i.e., ‘New’ and ‘Balance’ which have no such connection, allusion, or description of the products of the services offered by the Plaintiff.
Therefore, the court stated that the logo [NB] is also quite distinctive and has been repeatedly enforced by the Court orders against misuse and that the global reputation of the Plaintiff’s marks have been proved on record.
The court n the case had proceeded ex-parte against the defendant, which was stated to be using the ‘NB’ name and mark in respect of its immigration services.
The court vide a summary judgement, the said suit was decreed, but the said matter remained pending w.r.t. prayer for the well-known declaration, as the court directed plaintiff to file evidence.
The court observed that the plaintiff led evidence through its Power of Attorney to establish that the ‘New Balance’ marks fulfilled all factors laid down under section 11(6) of the Trade Marks Act for being declared well-known, viz.
1.The knowledge or the recognition of the trade mark in the relevant section of the public, including in India as well.
2. The duration, extent, and the geographical area of use of the trade mark
3. The duration, extent, and the geographical area of any promotion of the trade mark
4. The duration and geographical area of any registration of or any application for the registration of trade mark under the said Act to the extent that they reflect use or recognition of the mark
5. The record of successful enforcement of the rights in the said mark
The court also referred to the case Disruptive Health Solutions v. Registrar of Trade Marks, wherein the 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.
The counsel, Advocates 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 appeared for the plaintiff.
None for the counsel for defendant.