The ‘Red Sole’ Dilemma

Three recent and varied decisions by the Hon’ble Delhi High Court in Red Sole infringement case series seem to have created a judicial dilemma.

Christian Louboutin SAS is a well-known French company famous for its high end luxury products. In 1992, after painting the plain sole red, the company started using this color as an identifier on the outsoles of women shoes. The company is also the registered proprietor of the device mark, “RED SOLE” in multiple classes in India since 2010.

In December 2017, in the matter of Christian Louboutin SAS v. Mr. Pawan Kumar, the Hon’ble Delhi High Court had held Plaintiff’s Red Sole Trademark as a ‘well-known’ trademark while restraining the Defendants from using, in any manner, the Plaintiff’s impugned trademark and also awarded costs in favour of the Plaintiffs of INR 10.72 Lakhs.

However, in May 2018, in the matter of Christian Louboutin SAS v. Abubaker, the Hon’ble Delhi High Court dismissed the suit filed by Christian Louboutin against Defendants, who carry their business at two outlets located at Mumbai, for infringing the Plaintiff’s trademark ‘RED SOLE’ stating that ‘single colour cannot be exclusively appropriated by a manufacturer or seller for use of that one single colour as its trademark’.

The Hon’ble Court held that, “… no doubt the Plaintiff by virtue of Proviso of Section 9(1) and Section 32 of the Trade Marks Act can claim to have become owner of the trademark having the red colour applied to the soles of its shoes, yet even if the Plaintiff is the owner of such trademark being a single colour red applied to soles of ladies footwear, then because of and by virtue of Section 30(2)(a) of the Trade Marks Act, other manufacturers or sellers are not prohibited from using the colour red on their goods/shoes/footwear if the colour is serving a non-trademark function i.e., colour is a feature of the product or goods…”.

The Hon’ble Court further held that the use of the colour red by the Defendants on the soles of ladies footwear being sold by the Defendants will cause passing off, is a misconceived argument for the following three reasons:

  • Firstly, because, a single colour cannot become a trademark. Once a single colour is not capable of being a trademark, then the Plaintiff cannot claim rights in one colour as a trademark for exclusive use of the Plaintiff simply because the Plaintiff may have got / used the single colour as its trademark.
  • Secondly, the issue of passing off would arise only if there was disentitlement in the Defendants to not use the red colour shade in the soles of the ladies footwear being manufactured and sold by the Defendants, but there is no such disentitlement for the Defendants because the user by the Defendants of the red colour shade on the footwear is pursuant to the legal rights conferred upon the Defendants under Section 30(2)(a) of the Trade Marks Act as already discussed above. The Defendants are entitled in view of Section 30(2)(a) of the Trade Marks Act to use red colour in the soles of their footwear, even if the Plaintiff is held to be the owner of their trademarks, as the use of red colour in the soles is a characteristic of the product shoe.
  • The third aspect is that the issue of passing off and deception would arise if the Defendants were not selling their goods under any word mark, and simply by applying red colour to the soles of the ladies shoes / footwear, but that is not the case herein, since the Defendants are very much using a word mark being “VERONICA”. The Plaintiff is also using a word mark viz “CHRISTIAN LOUBOUTIN”, and which word mark of the Plaintiff is completely different than the word mark of the Defendants viz “VERONICA” and therefore, there does not arise any question whatsoever of any deception or confusion.

In view of the aforesaid discussion, the Hon’ble Court held that the Plaintiff will not be entitled to the reliefs urging infringement of its trademark or the Defendants passing off its goods as that of the Plaintiff or that the Plaintiff can claim existence of dilution, unfair competition etc. Use of a single colour of the Plaintiff does not qualify the single colour to be a trademark in view of provisions of the Trade Marks Act.

Interestingly in July 2018, in the most recent judgment in the Louboutin infringement case series i.e., Christian Louboutin SAS v. Ashish Bansal, the Hon’ble Delhi High Court granted an ex-parte decree of permanent injunction restraining the Defendants, including their partners, affiliates, etc., from infringing / passing off Plaintiffs registered trademark for the ‘RED SOLE’ trademark, or any similar trademark or from using trademarks, which are identical or deceptively or confusingly similar to the Plaintiffs registered trademarks, including the ‘RED SOLE’ trademark i.e. , so as to misrepresent the quality / origin of the goods and from taking unfair advantage of the Plaintiffs reputation and goodwill.

In view of the immense loss to goodwill and reputation suffered by the Plaintiffs, the Hon’ble Court noted that the Plaintiffs were entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages. The Hon’ble Court passed a decree for a sum of INR 20 Lakhs in favour of the Plaintiffs and against the Defendants on account of infringing the registered marks, trade dress and violating interim order.

In view of above, it will be interesting to see how Indian courts in future will deal with this issue and whether arguments of the trans-border / national goodwill and reputation of a mark / trademark will outweigh the provisions laid out in law. 

Contributor

Contributors to present post are Akshay and Srishti.

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