Delhi High Court ruling stresses that brands can still be deemed likely to deceive the public despite offering different services

On 1 June 2023 the Delhi High Court ruled in favour of New Balance Athletics  – a major global sports footwear and apparel manufacturer – in a case that the company filed against an entity using a deceptively similar corporate name, logo and domain. The court granted an ex parte permanent injunction in favour of the plaintiff and awarded costs of $5,000, payable by the defendant – New Balance Immigration.

New Balance Athletics designs manufactures, markets and sells footwear and ready-made clothing in 120 countries, with first use of the name ‘New Balance’ dating back to 1906 in the United States. Ever since, it has continued to use New Balance as the corporate name of its companies across the globe. It is also the registered proprietor of the NEW BALANCE and NB trademarks, with the first date of use in India being 1986. New Balance also registered the domain ‘www.newbalance.com’ in 1995.

The defendant, on the other hand, is engaged in the business of offering immigration and visa procurement services. The present suit was filed in 2022, when the plaintiff learnt of the defendant’s use of:

• the NEW BALANCE mark as part of its corporate name;
• the NB device mark as part of its corporate logo; and
• the domain ‘www.newbalanceimmigration.com’.

After the defendant failed to respond to the legal notice served, New Balance Athletics approached the Delhi High Court and in October 2022, the court granted an ex parte injunction in the plaintiff’s favour, restraining the defendant from using the NEW BALANCE marks. However, the defendant failed to comply with the court order, which led the plaintiff to file an application to place additional documents on record showing the defendant’s continued use of the impugned marks. The defendant also filed an application seeking to participate in the suit and filed a written statement arguing that the marks it used were different from the plaintiff’s and were implemented in different trade channels – hence, there was no likelihood of confusion.

The court observed that the plaintiff had proved its statutory and common law rights over the NEW BALANCE marks and associated goodwill and reputation, which extended beyond the goods of interest. It further observed that New Balance Immigration had failed to explain its adoption of the NEW BALANCE/NB mark that was deceptively similar to the plaintiff’s marks. According to the court, the defendant’s use was dishonest and intended to springboard its business by drawing an association with the plaintiff and riding on the latter’s goodwill and reputation. The defendant’s use of ‘newbalanceimmigration’ as its domain name was also likely to deceive consumers. The decision in Anugya Gupta v Ajay Kumar (2022 SCC OnLine Del 1922) was relied upon wherein it was held that:

the right of a proprietor in a domain name was entitled to equal protection. The user traffic might be diverted due to the use of the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. A domain name might therefore have all the characteristics of a trademark and could result in an act of passing off.

Holding that the plaintiff had successfully established a case of infringement as well as passing off by the defendant, the court passed a permanent injunction against the defendant. It also ordered the defendant to pay costs of 400,000 rupees ($4,900) as its adoption of the marks in question was neither done in good faith nor honest.