Delhi High Court Protects New Balance’s ‘N’ Device Marks and Reaffirms Passing Off Against Registered Proprietors

In New Balance Athletics Inc. v. Astormueller AG & Ors., CS(COMM) 962/2025, the Delhi High Court granted an ad interim injunction restraining the Defendants from using their impugned ‘n:’ device marks in relation to footwear. The ruling reinforces the settled principle that statutory trademark registration does not override the common-law remedy of passing off founded upon prior use and goodwill.

Summary

The Delhi High Court held that the Plaintiff had made out a strong prima facie case warranting interim protection, particularly on the ground of passing off. While the Defendants relied upon their own trademark registrations to resist the Plaintiff’s claims, the Court reiterated that registration does not bar an independent action for passing off.

Placing reliance on the Supreme Court’s decision in S. Syed Mohideen v. P. Sulochana Bai, the Court reaffirmed the superiority of prior-user rights in the context of passing off. It held that the Plaintiff’s long-standing goodwill, coupled with the deceptive similarity between the competing device marks and the identical nature of the goods, justified interim protection.

The judgment is a significant reiteration of the principles governing passing off, prior-user rights and the protection of reputed and well-known trademarks under Indian trademark law.

Facts of the Case

The Plaintiff’s Marks and Goodwill

New Balance Athletics Inc., founded in the United States in 1906, is the proprietor of several well-known ‘N’ device trademarks used extensively in relation to footwear, apparel and accessories. The Plaintiff traced the adoption of its iconic ‘N, , ‘ logo to the 1970s and demonstrated continuous use in India since the 1980s.

The Plaintiff established its goodwill through:

• Trademark registrations in India
• Retail operations and widespread advertising campaigns
• Sponsorships and celebrity endorsements
• Extensive online presence
• Earlier decisions of the Delhi High Court declaring its NEW BALANCE, NB and shaded ‘N’ device marks as well-known trademarks under the Trade Marks Act, 1999

The Defendants’ Impugned Marks

The dispute arose when the Plaintiff discovered that Astormueller AG and its Indian subsidiaries were marketing footwear under the NUBEAT brand using stylised ‘n: , , , ‘ device marks. These marks appeared prominently on footwear, packaging, websites and social media platforms.

The Plaintiff’s Contentions

Although the Defendants possessed registrations for their device marks in India and asserted honest adoption, the Plaintiff contended that the impugned marks were deceptively similar to its iconic ‘N’ device marks. The Plaintiff argued these marks were deliberately adopted to ride upon the Plaintiff’s substantial goodwill in the footwear market.

Cancellation petitions against the Defendants’ registrations had already been instituted before the Trade Marks Registry. The Plaintiff accordingly sought an interim injunction on the grounds of trademark infringement and passing off.

Issue before the Court

Whether a registered proprietor of a trademark can be restrained in a passing off action despite possessing trademark registrations, and whether the Defendants’ use of the impugned ‘n:’ device marks in relation to identical goods was likely to misrepresent an association with the Plaintiff’s reputed and well-known ‘N’ device marks.

Findings of the Court

Registration Does Not Bar a Passing Off Action

The Delhi High Court observed that although the Defendants were registered proprietors of the impugned device marks, such registration did not preclude the Plaintiff from maintaining an action for passing off. Relying extensively upon the Supreme Court’s decision in S. Syed Mohideen v. P. Sulochana Bai, the Court reiterated that rights arising from prior use and goodwill under common law continue to operate notwithstanding statutory registration.

Statutory rights arising from registration do not extinguish the independent common-law rights of a prior user. Consequently, even between two registered proprietors, an action for passing off remains maintainable where the following essential ingredients are established:

• Goodwill
• Misrepresentation
• Damage or likelihood of damage

Goodwill and Prior Use

Applying these principles, the Court found that the Plaintiff had established extensive goodwill through decades of use, substantial sales, widespread advertising, celebrity endorsements, retail presence in India and earlier judicial recognition of certain of its marks as well-known trademarks. The Defendants, on the other hand, had commenced commercial use of their impugned marks in India only in April 2024.

Likelihood of Confusion

The Court was of the prima facie view that the competing marks, when viewed from the perspective of an average consumer purchasing identical footwear through common trade channels, created a sufficient likelihood of confusion and initial interest confusion.

The possibility that consumers could perceive the impugned products as another variant or extension of the Plaintiff’s well-known product line could not be ruled out.

No Monopoly over a Single Letter

The Court also rejected the Defendants’ reliance upon their registrations and their argument that no monopoly could exist over the alphabet “N”. It observed that the controversy was not about ownership of a single letter in isolation but about the adoption of stylised device marks possessing substantial reputation and source-identifying significance.

Decision (Held)

The Delhi High Court held that the Plaintiff had made out a prima facie case warranting interim injunctive relief and that the balance of convenience lay in its favour. Accordingly, the Court granted an ad interim injunction restraining the Defendants from using the impugned ‘n:’ device marks or any other deceptively similar mark in relation to the impugned goods, where such use would amount to passing off, during the pendency of the suit.

The Court found that continued use of the impugned marks would cause irreparable harm and injury to the Plaintiff and erode and dilute the distinctiveness of its N-marks.

Importantly, the Court clarified that its observations and findings were tentative and prima facie and would have no bearing on the final adjudication of the suit.

Conclusion

The decision reinforces the settled principle that statutory trademark registration does not override the common-law remedy of passing off founded upon prior use and goodwill. By reaffirming the principles laid down in S. Syed Mohideen, the Delhi High Court reiterated that even a registered proprietor may be restrained in a passing off action where the claimant establishes goodwill, misrepresentation and damage or likelihood of damage.

The judgment also demonstrates how extensive reputation, prior use and judicial recognition of certain marks as well-known trademarks can strengthen a passing-off claim. This is particularly so where the competing marks are used for identical goods through common trade channels and are capable of creating initial interest confusion.

The ruling may provide useful guidance in disputes involving competing registered proprietors, stylised device marks and enforcement of reputed and well-known trademarks in India’s consumer goods market. However, since the findings in the present case were made at the interim stage and were expressly stated to be tentative and prima facie, the judgment should not be understood as a final adjudication of the parties’ rights.

Last Updated on 10 August, 2026