Delhi High Court
New Balance Athletics, Inc. vs Apex Shoe Company Pvt. Ltd. on 23 January, 2019
Equivalent citations: AIRONLINE 2019 DEL 2340
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 23rd January, 2019
+ CS(COMM) 850/2018 & IAs No.6402/2018 (u/O XXXIX R-1&2
CPC) & 16184/2018 (for condonation of 68 days delay in filing
replication)
NEW BALANCE ATHLETICS, INC. ..... Plaintiff
Through: Mr. Aditya Goyal, Adv.
Versus
APEX SHOE COMPANY PVT. LTD. ..... Defendant
Through: Mr. Abhishek Malhotra, Mr.
Himanshu Deora & Mr. Shashwat
Rakshit, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The application of the plaintiff for interim injunction in this suit for
permanent injunction restraining infringement of trade mark, passing off and
for ancillary reliefs is for consideration.
2. The counsel for the parties were heard on 22nd November, 2018 when
after hearing, personal presence of Mr. Simarpreet Singh, Director of the
defendant was directed. Mr. Simarpreet Singh, Director of the defendant
appeared before this Court yesterday and his statement was recorded; the
counsels were further heard and on request of the counsel for the defendant,
the hearing adjourned to today. The counsel for the defendant has been
further heard today.
3. The plaintiff instituted this suit, pleading (i) to be a company existing
under the laws of USA; (ii) to be engaged in the manufacturing, marketing
and sale of all types of footwear, readymade apparel including footwear and
CS(COMM) No.850/2018 Page 1 of 18
apparel in the field of sportswear under the trade marks „NEW BALANCE‟;
(iii) that the trade mark „NEW BALANCE‟ was adopted by the plaintiff‟s
predecessor in title in the year 1906 and thereafter has been in continuous
use in USA and around the world; (iv) that „NEW BALANCE‟ constitutes
not only the mark of the plaintiff but also constitutes an important and
essential feature of the trading name of the plaintiff; (v) that the plaintiff has
six manufacturing facilities in USA and wholly owned subsidiaries in U.K.,
Hong Kong, Singapore, Australia, New Zealand, Mexico, Canada and South
Africa; (vi) that the plaintiff is the registered proprietor of the mark „NEW
BALANCE‟ in India since 2nd February, 1990 in Class 18, in respect of bags
such as backpacks and tote bags for carrying sporting articles and since 18th
May, 1987 in Class 25, in respect of articles of athletic and sports, footwear
and clothing; both the said registrations are subsisting; (vii) that the plaintiff
sells its goods under the mark „NEW BALANCE‟ in more than 120
countries including India through specialty retailers, departmental stores etc.;
(viii) that the plaintiff also sells its goods online and the goods of the
plaintiff are offered for sale in India on Newbalance.co.in, Amazon.in,
Jabong.in, Myntra.in, Flipkart.in, Snapdeal.in and Liveyoursport.in; (ix) that
the plaintiff is also the owner of domain names comprising of „NEW
BALANCE‟ in different countries; (x) that "the plaintiff has been using the
trade mark „NEW BALANCE‟ in respect of its various goods and services in
India since at least as early as 1986; however, it is only in the year 2016, that
the plaintiff appointed a full time distributor in India; prior to 2016, the sales
in India were sporadic in nature"; (xi) that plaintiff‟s trade mark „NEW
BALANCE‟ has been endorsed by leading sportsmen as well as reputed
teams / national teams in various sports; (xii) that the plaintiff, sometime in
CS(COMM) No.850/2018 Page 2 of 18
March, 2017 came to know that the defendant had filed a trade mark
application for the mark „NEW BALANCE‟ in respect of footwear; and,
(xiii) that the plaintiff served a cease and desist notice dated 17 th March,
2017 to the defendant and to which the defendant replied on 18th April, 2017;
a meeting was arranged of the parties and in which meeting, the defendant
conveyed that it was willing to comply with the demand of the plaintiff
provided a monetary consideration was given to the defendant and which
demand of the defendant was rejected by the plaintiff.
4. The suit was entertained, though no ex parte injunction sought
granted.
5. The defendant, in its written statement has pleaded that (a) the
defendant has been in the footwear industry since early 1970s and the goods
sold by the defendant are available throughout India and are well known; (b)
the defendant has adopted various trade marks and of which „NEW
BALANCE‟ is one; (c) the defendant has used the mark „NEW BALANCE‟
since the year 1999 in conjunction with its house mark „APEX‟, resulting in
enormous goodwill and reputation and also acquired distinctiveness in
favour of the defendant; (d) the defendant has superior rights over the mark
„NEW BALANCE‟ in India; (e) the defendant filed application for
registration of „NEW BALANCE‟ on 13th April, 2000, claiming use since
1999; (f) the plaintiff has no user of the subject trade mark in relation to the
subject goods; (g) the registration in Class 18 cited by the plaintiff is in the
name of „New Balance Licensing Inc.‟ and the plaint does not disclose the
relationship between the plaintiff and „New Balance Licensing Inc.‟; (h) the
plaintiff has not filed any evidence of claimed use since 1986 and on the
CS(COMM) No.850/2018 Page 3 of 18
contrary has admitted its sales prior to 2016 being „sporadic‟; (i) the
defendant honestly adopted the mark „NEW BALANCE‟ in the year 1999;
(j) there is no likelihood of confusion owing to the difference in price, trade
channels, class of consumers, target market, manufacturing material / nature
of goods and character and performance of goods of the parties; (k) the suit
is highly belated, the defendant having commenced use of the mark in 1999
and there is no explanation for the delay; (l) even after coming to know in
March, 2017 of the defendant, the present suit has been filed only in March,
2018; the plaintiff has thereby acquiesced in use of the mark by the
defendant; and, (k) there is no document filed by the plaintiff of use of the
mark in India since 1999.
6. The plaintiff, in its replication, with respect to „New Balance
Licensing Inc.‟ has pleaded that the present suit is based on registration dated
18th May, 1987 in Class 25 in the name of the plaintiff and the counsel for
the plaintiff explains that the application of the plaintiff for rectification of
the registration dated 2nd March, 1990 in Clause 18 in the name of „New
Balance Licensing Inc.‟ to the name of the plaintiff is pending.
7. The counsel for the defendant at this stage states that the replication
has not been taken on record as yet.
8. It was the contention of the counsel for the plaintiff on 22 nd
November, 2018, that (i) the plaintiff learnt of the rights claimed by the
defendant in the trade mark „NEW BALANCE‟ of the plaintiff, from the
application filed by the defendant for registration of the said mark; (ii)
otherwise, the plaintiff has not found any sales by the defendant under the
said mark, though in the application for registration as well as in the reply to
CS(COMM) No.850/2018 Page 4 of 18
the notice preceding the suit, the defendant claimed so; (iii) the defendant
has filed documents in proof of sale, at pages 26 to 40 of their documents,
but the same also do not indicate as to what product is being sold thereunder;
(iv) the defendant has also not pleaded their sales figures; and, (v) the
defendant, from pages 41 to 153 has filed its brochure but not a single
product bears the trade mark „NEW BALANCE‟. It was on the aforesaid
contention that the personal presence of Mr. Simarpreet Singh, Director of
the defendant before this Court was directed.
9. Mr. Simarpreet Singh, Director of the defendant in his statement
recorded yesterday has stated that the mark „APEX NEW BALANCE‟ is
reflected in the brochure filed by the defendants before this Court and has
pointed out the pages of the said brochure. He has also stated that the mark
„APEX NEW BALANCE‟ is embossed on the shoes under the said mark
though not visible in the photographs thereof filed before this Court. It has
further been clarified by Mr. Simarpreet Singh that all goods are sold in the
name of „APEX NEW BALANCE‟ and not under the mark „NEW
BALANCE‟ alone, i.e. without the word „APEX‟ and that the sales of
„APEX NEW BALANCE‟ are not recorded separately.
10. The counsel for the plaintiff has argued that, (i) the defendant, who is
in the same trade as the plaintiff, is to be presumed to have known of the
market of the plaintiff in relation to the same shoes; (ii) the defendant
intentionally squatted over the mark of the plaintiff, with a view to extort
money from the plaintiff; (iii) in N.R. Dongre Vs. Whirlpool Corporation
(1996) 5 SCC 714, the damage to the mark by the defendant on account of
poor technology and low pricing was taken into consideration while granting
CS(COMM) No.850/2018 Page 5 of 18
the interim injunction; (iv) in para no.6 of Milmet Oftho Industries Vs.
Allergan Inc. (2004) 12 SCC 624, N.R. Dongre supra was analysed; and, (v)
all the registered trade marks of the defendant are with the prefix „APEX‟
and the defendant has no registration of „NEW BALANCE‟; even „NEW
BALANCE‟ is being used by the defendant in conjunction with „APEX‟.
11. Per contra, the counsel for the defendant has argued that, (a) the
plaintiff, while applying for registration, applied on „proposed to be used‟
basis; on the contrary the defendants in their application claimed use since
1999; (b) the registration of the plaintiff under Class 18 is with the
disclaimer with respect to the word „NEW‟; the plaintiff thus cannot claim
any right to the exclusive use of the word „NEW‟; (c) it is falsely stated that
the defendant intended to squat on the mark to extort monies; the question of
payment came up during the discussions held between the parties and it was
in the said context that the defendant had sent the communication to which
reference is made by the plaintiff; (d) the adoption by the defendant is honest
and owing to the technology adopted by the defendant of, the shoes of the
defendant having a unique balance which does not exist in the other shoes
available in the market and which imparts comfort; (e) there is no possibility
of any confusion / deception inasmuch as the market segment of the shoes of
the plaintiff and the defendant is different; the shoes of the defendant under
the mark „NEW BALANCE‟ are priced under Rs.1,000/-; (f) the annual sale
of the shoes under the mark „NEW BALANCE‟ is over 32 lacs pairs of
shoes; (g) while the shoes of the defendant are meant for farmers; the shoes
of the plaintiff qualify as sportswear; (h) the plaintiff itself in the plaint has
admitted its sales in India to be sporadic prior to the year 2016; (i) the
plaintiff has not produced a single document to prove sale and use of the
CS(COMM) No.850/2018 Page 6 of 18
mark in India before 2016; (j) the registration of the mark of the plaintiff is
not a word mark registration but a device mark registration; (k) the plaintiff,
after the knowledge of the use by the defendant also, has instituted this suit
after considerable delay and thereby acquiesced in use of the mark by the
defendant; (l) trafficking in trade marks is prohibited and it is the plaintiff
who obtained registration of the mark in India without any intent of use
thereof, as is obvious from non use thereof till 2016; (m) attention is drawn
to Section 47 of the Trade Marks Act, 1999 providing for removal of the
mark from Register for non use for five years; (n) the registration in favour
of the plaintiff is not of a „word mark‟ but of a „device‟ and the parameters,
as of a „word mark‟, will not apply; (o) in N.R. Dongre supra, there were
documents on record and admission of use of the mark by Whirlpool
Corporation in India and it was in the said context that injunction was
granted; (p) Milmet Oftho Industries supra relied upon by the counsel for
the plaintiff is in relation to pharmaceutical products and interim injunction
therein was granted in the context of public harm and the doctors in India
also keeping abreast of the developments in the field worldwide; (q)
attention is drawn to Columbia Sportswear Company Vs. Harish Footwear
2017 (70) PTC 489 where a Co-ordinate Bench vacated the injunction
reasoning that though the mark of the plaintiff therein may be well known in
foreign country but the presence of the plaintiff in India had not been shown
from any of the documents filed by the plaintiff and the percentage of
customers of the plaintiff remained a mystery; and, (r) reliance is placed on
Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Ltd. 2018 (2)
SCC 1 containing reference to Professor Critopher Wadlow‟s book "The
Law of Passing Off", 5th Edition, Sweet & Maxwell, opining that bona fide
CS(COMM) No.850/2018 Page 7 of 18
domestic traders should not be open to litigation at the suit of unknown or
barely known claimants from almost anywhere in the world.
12. I have considered the rival contentions.
13. Having weighed the rival contentions on the anvil of the ingredients of
prima facie case, irreparable injury, balance of convenience and public
interest, I find the plaintiff entitled to the interim injunction sought. My
reasons are stated herein below:
A. It is undisputed that as of today, the plaintiff is the registered
proprietor vide registration dated 18th May, 1987 in Class 25
(articles of athletic and sports, footwear and clothing, such as
hats, sweat bands, visors, sport shirts singlets, T-shirts, running
shorts, running suits, all weather suits, recreational tops and
shorts, aerobic exercise wear, socks athletic shoes, walking
shoes, aerobic dancing shoes and hiking boots) of "Trade Mark
Type: Device" and "Word Mark: New Balance" as under:
B. Though the aforesaid registration describes the type of the trade
mark as „device‟ but also describes the registration as of the
word mark „NEW BALANCE‟. The registration is thus of a
composite mark. The argument of the counsel for the defendant,
that the registration is not of word mark, does not find favour
because even if registration is considered as that of a device, the
device is nothing but of a rectangle with the words „NEW
CS(COMM) No.850/2018 Page 8 of 18
BALANCE‟ in capital letters on it, without any other frills.
Such a registration, though may be classified as of a device but
conveys only the word mark and there is nothing else in the
device by which the consumers can identify the same dehors the
word mark. The consumers are unlikely to distinguish between
the words „NEW BALANCE‟ placed in a rectangle and the
same words without the lines of the rectangle around them. The
contention of the counsel for the defendant that the plaintiff
cannot claim benefit of the said registration to restrain the
defendant from using the word mark „NEW BALANCE‟ owing
to being of a device mark, thus cannot be accepted. Reference
in this regard may be made to Amir Chand Om Prakash Vs.
Rajni Industries 2011 (124) DRJ 743 holding that the
prominent part of even the device mark, cannot be used by the
defendant. Here, as aforesaid, the device mark is nothing but the
words „NEW BALANCE‟ which have been used by the
defendant. Though in S.M. Dyechem Ltd. Vs. Cadbury (India)
Ltd. (2000) 5 SCC 573 it was held qua comparison of device
mark and word mark that where common marks are included in
the rival trade marks, more regard is to be paid to the parts not
common but subsequently in Cadila Health Care Ltd. Vs.
Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, the same was
disagreed with and it was held that the test is of similarity and
not dissimilarity.
C. The contention of the counsel for the defendant that the
aforesaid registration is of no avail, being on a proposed to be
CS(COMM) No.850/2018 Page 9 of 18
used basis, does not also disentitle the plaintiff from the interim
injunction. It is not the case that the defendant or any other
person, on account of non-user of the mark by the plaintiff, at
any time, till the institution of the suit, took any steps for having
the mark of the plaintiff removed from the register. It is not
open to the defendant to today, when faced with the prospect of
being restrained, raise the said pleas. I have in Sun
Pharmaceuticals Industries Limited Vs. Cipla Limited 2009
(39) PTC 347 and H&M Hennes & Mauritz AB Vs. HM
Megabrands Pvt. Ltd. (2018) 251 DLT 651 held that a
defendant in a suit for infringement cannot set up pleas of non-
use without seeking remedies before the Registrar of
Trademarks under Section 47 of the Trade Marks Act, 1999 as
the same, if permitted would undermine the efficacy of
registration and the presumption of validity of registration under
Section 31 of the Trade Marks Act and therefore an action for
infringement of trade mark cannot be defeated for disuse.
D. It is also not in dispute that at least as of today and since 2016,
the plaintiff has a full time distributor in India. Thus, again as
of today, both the plaintiff and the defendant are in use of the
mark with the mark of the plaintiff being registered and that of
the defendant not being registered.
E. The use by the defendant of the mark „NEW BALANCE‟ in
conjunction with „APEX‟ is incapable of distinguishing the
goods of the defendant from that of the plaintiff. In Jain
CS(COMM) No.850/2018 Page 10 of 18
Riceland Pvt. Ltd. Vs. Sagar Overseas 2017 (72) PTC 523
(Del) it was held that the addition of the brand name is not
sufficient. Moreover, the arrangements between foreign and
Indian parties, whereunder a foreign party allows an Indian
party to use its mark for goods manufactured in India, are not
unknown. The possibility of the consumers, notwithstanding the
plaintiff having not permitted the defendant to sell the goods
under the brand / mark „NEW BALANCE‟ of the plaintiff,
assuming so, cannot be ruled out. This Court in Piruz
Khambatta Vs. Soex India Pvt. Ltd. (2012) 193 DLT 670 and
the High Court of Bombay in Hem Corporation Pvt. Ltd. Vs.
ITC Limited 2012 SCC OnLine Bom 551 held that use of mark
as a sub mark amounts to infringement and that sub-brand is a
brand/mark.
F. It is also not in dispute that at least internationally, the user of
the mark by the plaintiff is of at least a century before that of the
defendant. The only question is, whether use in India by the
defendant of the mark on a bigger scale than the use by the
plaintiff, should disentitle the plaintiff from an interim
injunction.
G. In my view considering the nature of the product, with respect
to which the plaintiff as well as the defendant are using the
mark, and considering the targeted consumers thereof, a more
extensive use in India by the defendant of the mark even if any,
does not disentitle the plaintiff from interim injunction. The
CS(COMM) No.850/2018 Page 11 of 18
product of the plaintiff, with admittedly no distributor in India,
prior to the year 2016, could be procured by consumers in India
only through the online platforms through which the plaintiff
claims to have effected sales in India or on travel abroad. A
browsing of some such platforms qua shoes shows a huge
disparity in prices of shoes, with sports / walking / hiking shoes
being available for at least one tenth of the price of their
branded counterparts. Besides the perceived differences in
quality and comfort, what drives the purchasers of branded
products, as the product of the plaintiff is, to dish out ten times
or more the price for which other shoes are available, is the
brand value and brand consciousness, which plays a large part
in the purchase of branded products. In fact, All India Footwear
Manufacturers & Retailers Association, a consortium of
retailers of shoes, had initiated legal proceedings [W.P.(C)
No.7479/2015] in this Court to restrain sale of shoes through
online platforms, enabling the sellers thereof to sell the same at
a fraction of a price. A large part of the revenue of the plaintiff
goes into building the value of its brand „NEW BALANCE‟.
H. On the contrary, the defendant does not claim any brand value
of its mark „NEW BALANCE‟, though claims brand value of
its mark „APEX‟ under umbrella of which all shoes of the
defendant including under the mark „NEW BALANCE‟ are
sold.
CS(COMM) No.850/2018 Page 12 of 18
I. It is thus a mark having brand value which is pitted against a
mark having no brand value and on building of value whereof
the defendant has not spent any monies.
J. Availability of the shoes of the defendant under the mark „NEW
BALANCE‟, which it is not disputed, is similar if not identical
to the mark of the plaintiff, thus has potential of putting off the
intending consumers of the product of the plaintiff owing to the
brand of the plaintiff being dented by the presence in the market
of other products under a mark which can be confused with the
brand of the plaintiff.
K. The difference in price, trade channels and class of consumers,
all have capability of devaluing the brand / mark of the plaintiff.
L. The argument of the counsel for the defendant, that the product
of the defendant is aimed at farmers, also does not cut ice
inasmuch as though not visible from the brochure of the
defendant filed by the defendant, Mr. Simarpreet Singh,
Director of the defendant when appeared before this Court on
22nd January, 2019 stated that the defendant embosses the mark
„APEX NEW BALANCE‟ on its shoes though the same is not
visible in the photographs thereof. Mr. Simarpreet Singh,
Director of the defendant however had carried with him samples
of such shoes on which embossment of „APEX NEW
BALANCE‟ was found to be prominent on the rims of the soles
thereof. The brochure of the plaintiff shows the shoes of the
plaintiff also bearing the mark „NEW BALANCE‟ on the
CS(COMM) No.850/2018 Page 13 of 18
tongue and soles thereof. Moreover, once both the plaintiff and
the defendant are in the business of manufacturing and
marketing shoes, no restraint can be put on either, from
manufacturing different varieties and classes of shoes and
merely because the shoes of the defendant, as per the brochure
of the defendant may today appear to be different from the
shoes as found in the brochure of the plaintiff, is no ground to
refuse interim injunction.
M. The class of consumers targeted by the plaintiff are prone to
frequent travel to foreign territories where the plaintiff has been
marketing its shoes and to buying the shoes of the plaintiff
through online platforms. Such class of consumers,
notwithstanding the sporadic sales before 2016 of the plaintiff
in India, can be presumed to be aware of the mark of the
plaintiff and the availability of shoes of the defendant under the
said mark is capable of deception, confusion and dilution of the
mark of the plaintiff. It is now well settled that local reputation
is no longer the only consideration in determining goodwill and
reputation. Brands, in today‟s context, can enjoy transnational
repute, and advertisement in the media and on the internet is
enough to secure repute even if the plaintiff‟s products are not
being traded in the country in which it is seeking protection.
Reference in this regard may be made to (i) N.R. Dongre supra;
(ii) Jolen Inc. Vs. Doctor & Company (2002) 98 DLT 76; (iii)
Milmet Oftho Industries supra; (iv) Cadbury UK Limited Vs.
Lotte India Corpn. Limited 2014 SCC OnLine Del 367; (v)
CS(COMM) No.850/2018 Page 14 of 18
Neon Laboratories Limited Vs. Medical Technologies Limited
(2016) 2 SCC 672; and (vi) H&M Hennes & Mauritz supra
N. The plaintiff thus has a prima facie case in its favour.
O. The hit which the brand / mark of the plaintiff is likely to take
from the defendant, during the pendency of the suit continuing
to sell the goods under the same mark, will be irreparable and
any monetary compensation is unlikely to suffice. Once the
consumers of the goods of the plaintiff switch to another brand,
it will be an uphill task for the plaintiff to win them back. Thus,
the element of irreparable injury is also satisfied.
P. I find the balance of convenience to be in favour of the plaintiff
and against the defendant because if notwithstanding finding
prima facie case interim injunction is refused and the defendant
continues to sell the goods under the same mark, the defendant
is also likely to, if ultimately restrained, suffer loss and injury.
Moreover, the defendant though verbally is claimed to have
sales of 32 lacs pairs of shoes under the mark „NEW
BALANCE‟ has shied from pleading so in the written statement
and has not pleaded in the written statement any particulars of
the volume of its sales of shoes under the said mark, under the
umbrella mark „APEX‟ and / or the expenditure if any incurred
by the defendant on publicizing the mark „NEW BALANCE‟.
The plea of the defendant is that it does not maintain accounts
sub-mark wise. Thus, we have a mark pitted against a sub-
mark, and the sub-mark is to give in.
CS(COMM) No.850/2018 Page 15 of 18
Q. The balance of convenience is also found in favour of the plaintiff
because there are on record, (i) a cease and desist notice dated 17th
March, 2017 got issued by the plaintiff to the defendant; (ii) the
response dated 18th April, 2017 of the advocate of the defendant
thereto and in which the advocate for the defendant also stated that
the defendant was "ready for an amicable settlement in the subject
matter. The matter can be personally discussed in a joint meeting
if so agreeable in order to avoid futile litigation"; (iii) a printout of
e-mail dated 30th May, 2017 of the advocate for the defendant to
the advocate for the plaintiff though "WITHOUT PREJUDICE"
but referring to the meeting held on 16th May, 2017 and seeking to
know whether the advocate for the plaintiff had "received any
further instruction from your clients in regard to the settlement
discussions, including the term of monetary compensation to our
client"; and, (iv) the response dated 8th June, 2018 of the advocate
for the plaintiff to the advocate for the defendant "vehemently"
rejecting the suggestion of a monetary compensation to be given
and reiterating the demand for immediate cessation of use of the
mark „NEW BALANCE‟ by the defendant. Therefrom it prima
facie appears that the defendant was willing for a monetary
compensation to give up the use of the mark. The counsel for the
defendant has of course tried to explain that it was in response to a
proposal during the meeting of the plaintiff. However, from the
tenor of the correspondence, it does not appear so. The e-mail
dated 30th May, 2017 does not refer to any compensation offered
by the plaintiff or a higher compensation demanded by the
CS(COMM) No.850/2018 Page 16 of 18
defendant. It is felt that if the defendant, for monetary
compensation was willing to give up the use of the mark, the
damage which the defendant will suffer from being restrained
during the pendency of the suit from use of the mark can always be
compensated in the event of the defendant ultimately succeeding in
the suit.
R. It can safely be assumed that the defendant, at the time of applying
on 13th April, 2000 for registration of the word mark „NEW
BALANCE‟, must have conducted a search and would have come
across the registration in favour of the plaintiff. The defendant
even then did not take any steps to have the registration in favour
of the plaintiff removed on account of non-user by the plaintiff of
the mark. On the contrary, the defendant proceeded with its own
registration and which has not been granted as yet. Resultantly, in
the fight between a registered mark and an unregistered mark, at
this stage the registered mark has to statutorily succeed.
S. The argument of the defendant of the plaintiff being not entitled to
interim injunction on account of delay and laches is also not found
to have any force. Owing to the said delay and laches, though ex
parte injunction was not granted to the plaintiff, however the same
cannot now at the „After Notice Stage‟, after the counsels have
been fully heard, have any bearing. Reference in this regard can be
made to order dated 21st October, 2016 in CS(COMM)
No.1433/2016 and Ramaiah Life Style Café Vs. Eminent
Entertainment 2017 (70) PTC 532.
CS(COMM) No.850/2018 Page 17 of 18
T. Observations in Toyota Jidosha Kabushiki Kaisha supra relied
upon are in the context of passing off and not infringement.
14. IA No. 6402/2018 thus succeeds. The defendant is restrained, during
the pendency of this suit, from using the mark „NEW BALANCE‟ and / or
any other mark similar or deceptively similar thereto, amounting to
infringement / passing off by the defendant of its goods as that of the
plaintiff under the mark „NEW BALANCE‟
15. The defendant shall however have liberty to apply for grant of time to
enable it to inform its consumers of the new mark, instead of the mark „NEW
BALANCE‟.
RAJIV SAHAI ENDLAW, J.
JANUARY 23, 2019 „gsr‟..
(Corrected and released on 20th February, 2019) CS(COMM) No.850/2018 Page 18 of 18