Published December 7, 2023

In a landmark ruling, the Delhi High Court has recognized NEW BALANCE and NB, the distinctive symbols of the renowned sports footwear and apparel giant New Balance Athletics Inc., as well-known trademarks. This judicial decision not only highlights the brand’s uniqueness and prominence but also highlights the significance of well-known trademark status for global brands operating in India.

The legal battle leading to this judgment unfolded when New Balance Athletics Inc. initiated legal proceedings against New Balance Immigration Private Limited, a company operating in the immigration and visa procurement services sector. The latter was found to be using the marks NEW BALANCE and NB, leading to concerns of brand dilution and potential confusion among consumers.

The judge’s insightful observations emphasized that the combination of the words “New” and “Balance” in the mark NEW BALANCE form a unique expression with no direct connection to the company’s products or services. This verdict reinforces the notion that well-known trademarks transcend the ordinary; they encapsulate a brand’s identity in a way that distinguishes it from competitors.

The court also emphasized the protection granted to the logo, which is not just a design but a visual embodiment of the brand’s essence. The logo, with its distinctive features, has been rigorously defended against any unauthorized use through court orders. This highlights the importance of a comprehensive approach to trademark protection, encompassing both textual and visual elements.

The court’s intervention was swift and decisive. An ex-parte ad interim injunction order was granted in favor of New Balance Athletics Inc. on October 12, 2022, demonstrating the court’s commitment to preserving the integrity of well-known trademarks. The final decree on June 1, 2023, not only put an end to the infringement but also ordered the defendants to pay a substantial cost of ₹4 lakh, underscoring the seriousness with which such violations are viewed.

This legal triumph for New Balance Athletics Inc. extends beyond the courtroom, sending a clear message to other brands operating in India. Seeking well-known trademark status is not merely a legal formality; it is a strategic move that strengthens a brand’s reputation and shields it from unauthorized use or imitation.

In today’s increasingly interconnected world, global brands are constantly seeking new markets to expand their reach and establish a strong presence. India, with its vast consumer base and growing economy, offers a lucrative opportunity for international businesses to establish themselves. However, in this competitive market, it is crucial to take proactive measures to protect one’s brand identity and reputation.

One of the most effective ways to safeguard a brand’s unique identity in India is to apply for well-known trademark status. This legal recognition is governed by Section 2(1)(zg) of the Trade Marks Act, 1999, and provides a brand with enhanced protection and a competitive edge in the Indian market.

The significance of well-known trademark status

Well-known trademark status is not merely a legal formality; it is a strategic imperative for global brands operating in India. It offers several compelling benefits, including:

  • It gets robust legal protection in India and across the globe
  • The goodwill and reputation of the brand get protected across goods and services on a Pan-India basis
  • Any impersonation or deception is dealt with firmly and has strong legal consequences
  • The brand commands significant popularity and fame in the market
  • Subsequent attempts to register trademarks for products or services even remotely similar are rejected
  • Greater bargaining power in licensing and franchising.

The process of obtaining well-known trademark status

The process of obtaining well-known trademark status in India is relatively straightforward and can be initiated by filing an application with the Trademark Registry. To succeed in this endeavor, brands must demonstrate extensive marketing efforts, widespread media coverage, and strong consumer awareness of their brand.

A strategic investment for long-term success

Applying for well-known trademark status is a proactive investment that can yield significant benefits for global brands operating in India. It is a strategic decision that can safeguard a brand’s identity, enhance its marketability, and pave the way for long-term success in this dynamic and competitive market.

A call to action for international businesses

International businesses seeking to enter or expand their presence in India should view well-known trademark status as a strategic imperative. It is a crucial step towards establishing a strong foundation in the Indian market and building a lasting brand legacy. By proactively protecting their intellectual property, global brands can unlock the true potential of the Indian market and achieve sustainable growth.

Dinesh Parmar

Written by Dinesh Parmar

Managing Partner and Attorney at Law and Patent & Trademark Attorney, Parker & Parker Co. LLP

Parker & Parker Co. LLP

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