Christian Louboutin SAS Vs. Abubaker and Ors.
Decide on: 11.04.2019
FACTS OF THE CASE:
The Appellant (Plaintiff), a company duly incorporated under the existing laws of France, having its registered office at Paris against the Defendants who are located in Mumbai. The suit was filed for a permanent injunction to restrain the Defendants from infringing the Plaintiff’s trademark, passing off, unfair competition, dilution and tarnishment, apart from damages, rendition of accounts of profits and delivery up etc.According to the Plaintiff, when it conducted a market survey in early April, 2018 it learnt of the Defendants’ use of the Plaintiff’s ‘RED SOLE’ trademark on ladies shoes being sold by the Defendants. Relying on the report of a private investigator who visited the premises of the Defendants, the Plaintiff claimed that the Defendants were engaged in counterfeiting activities by selling shoes that bore the Plaintiff’s well-known trademark ‘RED SOLE’.
In the plaint, it was explained that the Plaintiff’s ‘RED SOLE’ trademark has been registered in Clause 25 with No. 1922048 (with an illustration of an outsole of a shoe, which is not reproduced here) in respect of the shoes, except orthopedic footwear, with the sole condition and disclaimer that “the mark shall be limited to the color Red as shown in the representation on the Form of the application. The plaintiff further stated that “the trademark, being an innovation of the Plaintiff, is used and known only in relation to the Plaintiff goods of the Plaintiff only”.The claim of the Plaintiff is that “due to its uniqueness and since the said trademark is the central and quintessential element of the of the Plaintiff, the Plaintiff considers this intellectual property is incredibly valuable and has expended a significant amount of resources on securing registrations and protecting the ‘RED SOLE’ trademark”.
Can a single colour ever become a trademark as defined in the Marks Act, 1999?
The learned Single Judge has on an analysis of Section 10 read with Section 30(2)(a) of the Act come to the conclusion that a “single colour not being a mark, the single colour cannot be claimed as a trademark”. The Plaintiff assails this to be based on an incorrect understanding of the Plaintiff’s mark. From the averments in the plaint, it is evident that the Plaintiff is claiming distinctiveness over the use of ‘pantone red’, which is a particular shade of the colour red and used at a specific part of a shoe. As pointed out by the Plaintiff, “this placement is illustrated in the trademark registration certificate as being the outsole of a shoe, which is limited to the colour Red.” The Plaintiff further claims that
“The placement of the colour is completely arbitrary and of a whimsical character. That further that this in-dissociable combination constituting the mark does not result from the shape imposed by the nature or function of the product. That if the RED SOLE trademark is emblematic, it is due to the promotional efforts of the Appellant.”