Ordinary Consumer Likely To Be Confused: Delhi HC Awards 7 Lakhs As Costs & Damages To 'New Balance' In Trademark Infringement Suit
The Delhi High Court has granted relief to a global sports footwear and apparel brand 'New Balance'' in a trademark infringement suit by ordering a local shoe company to pay Rs 7 lakh as costs and damages.
The Delhi High Court was considering a suit seeking permanent injunction restraining trade mark infringement, passing-off, and acts of unfair competition, arising out of the defendant’s manufacturing, marketing, and sale of footwear bearing the marks- N Device, K Device and 550. It was claimed that these marks were nearly identical and/or deceptively similar to the plaintiff’s N Device and 550 marks.
The Single-Judge Bench of Justice Mini Pushkarna said, “The defendant is not entitled to use the mark ‘N’ or ‘550’ or any other mark, which is deceptively similar to the plaintiff’s trademark.
The plaintiff was represented by Advocate Urfee Roomi while the defendant was represented by Advocate Sanjeev Singh.
The plaintiff- New Balance Athletics Inc. claimed that its marks have acquired immense goodwill and reputation in the market, owing to such long term and extensive use, and are associated solely with the plaintiff and its goods/services. In India the plaintiff has been owning valid and subsisting registrations for the plaintiff’s N marks.
It was the petitioner’s case that the defendant's marks are nearly identical to the plaintiff's marks. It was also brought to the Court’s attention that the defendant is actively and extensively conducting his business through his own website i.e., www.knoos.in as well as through e-commerce websites. Upon knowledge of the infringing acts of the defendant, the plaintiff conducted a private investigation through an investigation firm which revealed that the defendant is actively engaged in the manufacture, marketing and sale of footwear bearing the defendant’s marks throughout the country.
Earlier, the Court had granted an ex-parte ad-interim injunction restraining the defendant from dealing with footwear bearing the marks N, 550 marks, or any other mark deceptively similar to the plaintiff’s marks. The Local Commissioner had also seized a large quantity of infringing products including, about hundred pairs of counterfeit footwear.
After going through the submissions and the factual aspects, the Bench noted that no plausible justification or explanation had been given by the defendant as to why the trademarks ‘N’ or ‘550’ were adopted. The statement of the defendant provided to the investigator of the plaintiff recorded that the defendant adopted the infringing marks, in order to boost its sales, highlights his mala fide and dishonesty in adopting the same marks, as that of the plaintiff’s.
“Thus, it is clear that the defendant has infringed the plaintiff’s registered trademark”, the Bench held while further adding, ‟An ordinary consumer, having average intelligence and without minute examination on the background of the defendant, is likely to be confused that the defendant has some association or connection with the plaintiff. Thus, use of the plaintiff‟s marks by the defendant gives an unfair advantage to the defendant and is detrimental to the distinctive character or repute of the plaintiff’s registered trademark.”
Considering the aforesaid discussion and the statement of the defendant, expressing his readiness to suffer the decree of injunction, the Bench granted the plaintiff a decree of permanent injunction in its favor, and against the defendant.
Noting that the defendant's adoption of the infringing mark couldn’t be considered to be bona fide or honest, the Bench said, “The defendant knowingly infringed the plaintiff's trademarks and cannot plead ignorance of prior existence, as well as the reputation of the plaintiff’s registered trademark. The defendant has no plausible justification for adopting the plaintiff's trademark, other than to ride upon the plaintiff's immense reputation and goodwill. The plaintiff has filed its affidavit of costs and has also demonstrated its entitlement for damages.”
Further ordering that the infringing products which were confiscated by the Local Commissioner be destroyed by the defendant, the Bench held, ‘The plaintiff is entitled to Costs of ₹ 5,00,000 and Damages of ₹2,00,000.’
Cause Title: New Balance Athletics Inc. vs. Pulkit Khubchandani [2024: DHC: 8345]
Appearance:
Plaintiff: Advocates Urfee Roomi, Janaki Arun, Ayush Dixit, Jaskaran Singh and Chahat Bhatia
Defendant: Advocates Sanjeev Singh and Sanchit Bhushan with defendant in person