By Rima Majumdar and Tanya Sharma
Introduction
After the Intellectual Property Division (IPD) was set up in the Delhi High Court, several marks have been declared as well-known by the Hon’ble Court at the time of passing the final judgment in a suit. So much so that, litigants now add a prayer specifically seeking for the mark in question to be declared as a well-known mark.
In a dispute between New Balance Athletics Inc. and New Balance Immigration Private Limited[1], the IPD Bench of the Delhi High Court after passing a Summary Judgment in the suit, looked into evidence in support of the Plaintiff’s prayer for its mark NEW BALANCE to be declared as a well-known mark!
New Balance- A Well-known Trademark in India
- The suit was concerning the infringement of the NEW BALANCE, NB, marks by the Defendant, who were using an identical mark for operating their immigration services business. The contending marks in question are as under:
New Balance- A Well-known Trademark Plaintiff’s Mark Defendant’s Mark NEW BALANCE NEW BALANCE NB, 
,
- Previously, the Hon’ble Court had issued an ex-parte interim injunction on September 15, 2022, and since the Defendant did not appear in the suit and defend it, a Summary Judgment under Order 13A of Civil Procedure Code, 1908 was passed on June 01, 2023.
- The suit was decreed in and costs of INR 4,00,000 was also imposed on the Defendant.
Thereafter, the Hon’ble Court directed the Plaintiff to file Evidence in support of its prayer for declaration of the mark NEW BALANCE as well-known
Evidence Led by the Plaintiff
The Plaintiff submitted that its mark is worthy of being declared as Well-known in view of the fact that, it meets all the requirements as laid down in Section 11(6) of the Trade Marks Act, 1999.
- Requirement No. 1 being- The knowledge or recognition of the trade mark in the relevant section of the public, including in India.
- Requirement No. 2 being- the words “New” and “Balance” is unique and distinctive, and that the “NB” logo also has distinctive character and the same has consistently been confirmed by court orders against misuse of the “NEW BALANCE” mark. The court also found that the general reputation of the plaintiff’s trademarks was established by the voluminous evidence presented in the case.
- Requirement No. 3 being- Period, extent, and geographic region of any promotion of the trade mark, including advertising or publicity and presentation at fairs or exhibitions of goods or services to which the trade mark applies.
- Requirement No. 4 being- Period and geographic area of any registration of or application for registration of the trade mark under the Act, up to the point where it shows usage or recognition of the mark.
- Requirement No. 5 being- Record of successful enforcement actions concerning that mark, especially how far the trade mark has been acknowledged as a famous trade mark by any court or registrar.
Court’s Decision
At the outset, the Court noted that the mark NEW BALANCE is a unique combination of two distinctive words “New” and “Balance” which have no association with the kind of goods sold by the Plaintiff. Furthermore, the 
logo is not only distinctive, but has been regularly enforced by the Plaintiff.
Taking into consideration the evidence provided by the Plaintiff and referring to the cases of:
- Disruptive Health Solutions v. Registrar of Trade Marks[2] which had laid down that, the test of distinctiveness of trade marks is, “a mark is capable of being protected if either it is inherently distinctive or has acquired distinctiveness through secondary meaning. In the spectrum of distinctiveness, the first category of marks is of arbitrary, fanciful and invented marks which is of absolute distinctiveness.” AND
- The case of Levi Strauss and Co. v. Interior Online Services Pvt.Ltd.[3] where the reputation of Levi’s ‘Arcuate Stitching Design’ which is a distinctive pattern stitched on the back pockets of every pair of Levis jeans, was declared as a well-known mark.
The Court held that, the marks NEW BALANCE and the logo 
are well-known. It was also clarified that nobody can claim monopoly on the words “New” and “Balance” when used independently with regard to any other commodities or services.
Author’s note:
Ever since the establishment of the IP Division Bench at the Delhi High Court, several trade marks have been declared as well-known by this Hon’ble Court. Some of these include, Supreme, Bukhara, Vistara, Hermes and many more.
In fact, since the IPD Bench was established, the Court has proactively recognized several marks as well-known, and in many cases if not declared a mark as well-known, have at least remarked on its reputation and goodwill. This has in turn allowed brands to further strengthen and protect their IP and also introduce their goods & services in India, thereby putting India on the map as a country that is mindful about IP rights.
However, for many such brand owners, even though a mark has been declared as Well Known by a court in India, they should consider the next step, i.e., trying to get their mark included in the official list of Well-Known marks in India.
[1] CS(COMM) 444/2022
[2] 2022 SCC OnLine Del 2002
[3] CS(COMM) 657 of 2021
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