Full Text
HIGH COURT OF DELHI
CS(COMM) 572/2022, I.A. 13135/2022, I.A. 8077/2023 & I.A.
9713/2023 NEW BALANCE ATHLETICS INC. ..... Plaintiff
Through: Mr. Dushyant Mahant, Mr. Urfee Roomi, Ms. Janaki Arun and Mr. Alvin Antony, Advs.
Through: Mr. Sanjeev Sagar and Ms. Nazia Parveen, Advs.
JUDGMENT
31.07.2023
1. In the affidavit filed by Mr. Amit Arora, he has tendered an unconditional apology in compliance with the order dated 5 April 2023 passed by this Court. Mr. Mahant graciously accepts and submits that his client does not intend to pursue the proceedings against Mr. Amit Arora any further.
2. The plaintiff alleges infringement, by the defendant, of the plaintiff’s registered trademarks, and. The assertions in the plaint, in support of this allegation, are as under:
(i) The plaintiff is a company incorporated in Massachusetts,
USA. It claims to have commenced business in the US in 1906, through its predecessor-in-interest New Balance Arch Support Company (NBASC). NBASC was engaged in the manufacture and sale of footwear.
(ii) Over a period of time, the plaintiff amassed reputation and goodwill to the extent that it sells its product in over 120 countries, including India. Documents supporting this assertion are also placed on record with the plaint.
(iii) The plaintiff is the registered proprietor of the following trademarks:
1. 25 18 May 1987 18 May 2028
2. 25 10 September 1997 10 September 2027
3. 25 6 March 2007 6 March 2027
3. It is further stated that the plaintiff has sponsored several international events, including the Olympic teams of Ireland and Chile at the 2016 Rio Olympics, apart from others, in which the plaintiff’s footwear was worn by the athletes and players.
4. The defendant is using the letter N on its shoes/footwear in a slanted fashion, similar to the manner in which the plaintiff represents the letter N. Inasmuch as these marks are used on identical goods, the plaintiff submits that there is every likelihood of confusion and deception in the mind of a customer of average intelligence and imperfect recollection. A comparison of the footwear figuring the plaintiff’s and defendant’s logo is provided thus, in the plaint: Defendant’s N Mark Plaintiff’s N Marks
5. At the time of issuing summons in the suit, on 23 August 2022, this Court granted an ex parte ad interim injunction against the defendant from manufacturing, selling, offering for sale any shoes, footwear or cognate or allied products bearing the N device marks, New Balance or the NB logo belonging to the plaintiff. This order was somewhat modified on 5 April 2023 by allowing the defendant to use the word “NINE” but not to use the letter N in a manner similar to the manner in which the plaintiff was using the said letter. That interim injunction has been continued from time to time and remains in force as on date.
6. The right of the defendant to file written statement was closed by the learned Joint Registrar (Judicial) vide order dated 11 November
2022. That order has also attained finality.
7. Mr. Sagar, learned Counsel for the defendant submits, on instructions, that his client is willing for the suit to be decreed in terms of the prayers contained in the suit, subject, however, to the defendant being permitted to use the word “NINE”, as was allowed by this Court vide order dated 5 April 2023. Mr. Mahant, learned Counsel for the plaintiff is also agreeable to this course of action.
8. The prayer clause in the suit reads thus:
9. In view of the aforesaid, the suit stands decreed in the following terms:
(i) A decree shall issue in terms of prayer (a) to (c) in the suit.
(ii) With respect to prayer (d), which is relatable to the shoes, which were found in the premises of defendant and seized by the learned local Commissioner, the defendant is permitted to remove, from the said shoes, the infringing “N” mark or any other mark which is deceptively similar to the plaintiff’s registered trademarks, subject to the right of the defendant to use the word “NINE”. This removal shall take place in the presence of a representative of the plaintiff at a time and place mutually agreed upon between them. Thereafter once the infringing marks are removed, the defendant shall be at liberty to dispose of the said shoes/footwear in any manner as the defendant deems appropriate.
(iii) In the circumstances, Mr. Mahant fairly does not press prayers (e) and (g) in the plaint. The said prayers accordingly stand disposed of as not pressed.
(iv) However, Mr. Mahant presses prayer (h) which seeks costs of the proceedings. In the circumstances of the case, as the plaintiff has been constrained to approach this Court and had to suffer the litigation, the plaintiff would be entitled to costs at actuals. For this purpose, let the plaintiff file a statement/certificate of costs with advance copy to learned Counsel for the defendant. List the matter for hearing on the aspect of costs before the Taxation Officer of this Court on 29 August 2023.
10. The only prayer that remains for consideration is prayer (f), which seeks a declaration that the plaintiff’s registered trademarks,, and. are well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act. This aspect would be considered separately, as it would require the Court to examine whether the requisite criteria as envisaged by Section 11(6) of the Trade Marks Act are satisfied on the basis of the assertions in the plaint and the material placed on record by the plaintiff.
11. For the present, therefore, the suit stands decreed in the aforesaid terms.
12. Let a decree sheet be drawn up accordingly.
13. List the suit for hearing on prayer (f) on 16 August 2023.
C.HARI SHANKAR, J JULY 31, 2023 ar