The Order of the Delhi High Court in the case of “NEW BALANCE ATHLETICS INC., VS. ASHOK KUMAR & ORS.” throws light upon the increasing challenges that the IP owners/proprietors have been facing with the advancement of technology in the era of the internet.
NEW BALANCE ATHLETICS INC., (New Balance) an American company, is engaged in the design, manufacture, marketing, and sale of sports footwear and apparels since 1906. New Balance products are sold in more than 120 countries, including in India, through retail stores owned and/or operated by New Balance, through franchisees, department stores, and e-commerce sites. New Balance is the registered proprietor of several trademarks inter alia “NEW BALANCE”, “NB Device Mark” and the “N Device Mark”.
Source – Judgement
*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.
New Balance started using the letter “N” alongwith a combination of letter, namely “NB”, as a trademark since 1970. Whereas, in India, it started using the “New Balance” mark and the “N Device” mark on their footwear since 1986, while the “NB Device” mark was first used on the footwear in the year 1987.
New Balance was aggrieved of the fact that several unknown entities, operating through domain names, namely,
www.sastajoota.com and
www.sastajoota.co.in, were offering counterfeit footwear, bearing the registered trademarks of New Balance without any authorization.
New Balance thereafter approached the Delhi High Court claiming trademark infringement. It contended that the unknown entities were habitual offenders having indulged in similar activities and had also been injuncted by the Delhi High Court in the previous matter of PUMA SE v. Ashok Kumar Trading as SastaJoota & Ors. CS (COMM) 48/2022.
New Balance submitted that in spite of having been injuncted from using
www.sastajoota.com as a domain name, the unknown entities continued an illegal use of the domain name
www.sastajoota.co.in by redirecting the loggers from the earlier website to the new one. New Balance further submitted that the goods offered through the unauthorised website were not original but exact replicas of the existing designs of the luxury brands.
Having considered the averments made in the plaint, perused the documents filed along with, as well as the submissions made by New Balance, the Court held that not only was prima facie case for grant of an injunction had been made out but even the balance of convenience lied in the favour of New Balance. Having consideration of an irreparable loss likely to be caused to New Balance and also to the consumers in case the unknown entities were not restrained from continuing with their web portal, the Court granted an ex-parte ad-interim injunction and restrained the unknown infringers for violation of trademark rights of New Balance and other brands as well.
In addition, the Court also directed other defendants to provide contact details of the proprietors/registrants
www.sastajoota.com and
www.sastajoota.co.in and deactivate/block the said website till further orders. Similarly, necessary directions were issued for blocking of the aforesaid websites on effective and immediate basis. The matter is now listed for further hearing on August 29th, 2022.
