New Balance achieved after court tilts scales

In June 2023, Delhi High Court heard the trademark infringement case of New Balance Athletics Inc. v New Balance Immigration Private Limited. The court held that the defendant had breached a previously granted injunction, prohibiting it from using the marks New Balance and NB in any form or manner.

The plaintiff, New Balance Athletics, is a global company specialising in the design, production and distribution of footwear and apparel. It brought an action against New Balance Immigration to obtain a permanent injunction, asserting that the defendant had violated its trademarks and engaged in deceptive practices by passing off its goods and services as those of the plaintiff.

In support of its allegations, the plaintiff submitted evidence of the company’s extensive history of using and registering the New Balance and NB marks. The plaintiff claimed it started using the mark New Balance in India in 1986 and held valid and subsisting registrations for those marks in class 25 and other classes together with a domain name, newbalance.com, registered in 1995.

The defendant, New Balance Immigration offered immigration and visa procurement services in India. In May 2022, the plaintiff sent a legal notice and a reminder notice, to which the defendant did not reply. Subsequently, the plaintiff commissioned an investigator’s report, revealing that the defendant was using the New Balance mark as a part of its corporate name and the NB device mark as a part of its corporate logo. It also showed that the mark in question formed part of the defendant’s domain name, newbalanceimmigration.com.

Although served with the summons, the defendant failed to appear in court, resulting in an interim injunction being granted in favour of the plaintiff in October 2022. This order restrained the defendant from using the trademarks in any manner, including advertising, and using them as its corporate name or its domain name.

Subsequently, the defendant filed an application to participate in the lawsuit. Considering the stated justification for their non-appearance and lack of representation, the court allowed it to take part in the proceedings from the date it entered appearance, that being a date in January 2023.

It was claimed by the defendant that it was using the marks in question in different trade channels, thereby eliminating any likelihood of confusion. However, the court considered the plaintiff’s request to submit additional documents as evidence. These provided proof of the defendant’s persistent use of the infringing marks despite the previously issued injunction. The court granted the application and admitted the additional documents into evidence.

The court analysed the plaintiff’s claims, including its ownership of the New Balance marks, the goodwill and reputation associated with those marks, and the alleged deceptive similarity between the plaintiff’s and the defendant’s marks. The court considered the claim of similitude in detail and determined that the defendant’s mark was indeed deceptively similar to the plaintiff’s marks. The defendant was also held to be using an NB device mark that fully incorporated the plaintiff’s NB mark, thus creating an association with the plaintiff.

The court found the defendant’s domain name to be deceptively similar to that of the plaintiff and likely to deceive the public that it was linked with the plaintiff. The court concluded that the defendant’s use of these marks in its trade name and domain name was likely to deceive the public, and constituted trademark infringement and passing off. The court pointed to the defendant’s failure to appear and to file a written statement admitting or denying the plaintiff’s case within the prescribed period as undermining their defence.

The court ruled that the defendant had no real prospects of successfully defending the claims in the case. In the hearing, the defendant raised no objection to a permanent injunction being made. It had resolved in April 2023 to wind itself up and incorporate a new company. However, it submitted that no costs should be ordered.

The court granted a permanent injunction in similar terms to the interim order. It also ordered the defendant to pay costs of INR400,000 (USD4,900) as its adoption of the marks in question was neither done in good faith nor honest.