Recently, one incident brought to light the never ending fight between the luxury brands and their counterfeits. The Delhi High Court in a trademark infringement suit granted injunctive relief and damages of INR 10 lakhs to high end luxury shoe brand maker Christian Louboutin (hereinafter referred to as the ‘Plaintiff’) against 3 shoe stores in New Delhi, who were selling products that were infringing the famous RED SOLE trademark.
- The Plaintiff in this case is a company incorporated under the laws of France having its registered office at Paris. It was mentioned by them that they are known for their luxury fashion products especially the signature ‘RED SOLE’ high heeled shoes. In India, the Plaintiff has two stores, one in Mumbai and the other in Delhi.
- The Defendant No. 1 is the sole proprietor of ‘Kamal Family Footwear’ and ‘Kamal Footwear’ (Defendant no. 2 and 3 in this case) located at Karol Bagh in New Delhi. Defendant No. 4 is the proprietor of ‘Adara Steps’ (Defendant no. 5 in this case) located at Ghaffar Market in New Delhi.
- The Defendants sell women accessories and shoes online on social media platforms and offline in markets.
- In February 2016, the Plaintiff conducted an extensive market survey during which it was found out that the Defendants are using its trademark and designs to sell its products. Further investigation was carried out in March, 2016 and May 2016, confirming the infringing activities of the Defendants.
- Thus, the Plaintiff filed this suit seeking permanent injunction against the shoe stores from the use of its distinctive design and claimed damages worth INR 1,00,05,000/-.(USD 156178 approx.)
Has the Defendants infringed the ‘Red Sole’ trademark of the Plaintiff?
Contentions of the Plaintiff –
- The Plaintiff stated that ‘RED SOLE’ is the signature of their brand, and further mentioned that virtually all the shoes that the Plaintiff has created had this characteristic red sole since 1992. ‘A shoe with a red sole clearly identifies the product as that of the Plaintiff and distinguishes it from the goods of every other person’.
- It was also contended that the trademark of the Plaintiff enjoys worldwide recognition and is used extensively in India. Trans-border reputation was also asserted by them because of many factors including tourist travel, in-flight magazines, internet and broadcasting of various films and television programs. It was stated that ‘The goodwill and renowned reputation of the ‘RED SOLE’ trademark has spilled over into India from various countries around the world and consumers were well aware of this goodwill and reputation even before the mark of the Plaintiff was first formally launched in India.’
- It was also contended that ‘the ‘RED SOLE’ trademark wherein a specific tone of color red (pantone no. 18.1663TP) is applied to the outsole of a shoe, is unique in its own accord and became known in the world of fashion only after being introduced by the Plaintiff herein.’
Contentions of the Defendants –
The Defendants did not appear in this case and the proceedings were carried on exparte.
- The Court accepted the evidences given by the Plaintiff and agreed that its mark is a well-known mark. The reasons that the Court gave were –
- The Plaintiff is well-known luxury brand with presence in over 60 countries including India;
- The Plaintiff has been using its ‘RED SOLE’ trademarks extensively and continuously since 1992;
- The Plaintiff’s ‘RED SOLE’ trademarks are known to customers throughout India;
- The Plaintiff is recognized as a sole licensor of the Christian Louboutin trademarks and has successfully enforced its rights in the said trademarks;
- The Plaintiff has extensively promoted its luxury products under its Christian Louboutin trademarks including the ‘RED SOLE’ trademark in India;
- The Plaintiff has extensive presence over the Internet;
- The Plaintiff’s website is accessible to consumers in India and have served in making customers in India aware of the plaintiff, the various luxury products of the Plaintiff and the Plaintiff’s well known trademarks including the ‘RED SOLE’ trademark;
- The Plaintiff has received various awards and accolades for the luxury products made available under the Plaintiff’s well-known trademarks including the ‘RED SOLE’ trademark.
- The Court accepted the contention of the Plaintiff that they are the registered proprietor of the ‘RED SOLE’ trademark, which is infringed by the Defendants. Therefore, it granted a permanent injunction in the favor of Plaintiff.
- While deciding on the issue of grant of damages the Court threw light on its judgement in the case of Hindustan Unilever Limited v. Reckitt Benckiser India Limited (2014 (57) PTC 495). It further observed that the infringement is going on for 15 months and 45 pairs of infringing shoes were recovered from the premises of the Defendant. Thus, after taking into consideration several factors like the turnover of the Defendant, the Court granted INR 10 lakh to the Plaintiff as damages and litigation cost.
Analysis Christian Louboutin is luxury fashion brand that has had several trademark litigations in various countries. The reputed ‘Red soled Design’ has been recognized as being an integral part of its brand. Countries and regions such as the UK and the European Union offer an unregistered form of protection called the Unregistered Community Design Right (hereinafter referred to as ‘UCD’) for a relatively short period of time that comes into force after the publication of such design in any of the 25 countries of the EU. More commonly inferred from the Yves Saint Laurent case, where the former launched a collection of shoes in a spectrum of colors each of which had soles corresponding with the upper color, it ended with the assertion that Louboutin’s monopoly could not prevent other fashion houses for creating red shoes with red soles, but the restriction did apply to red soles belonging to contrasting color shoes as that could be misleading to the generic public who associates this scheme strictly with Louboutin. A table containing a few registered marks of Christian Louboutin around the world is as follows –
However, Louboutin has also filed trademarks in several countries with the specific intent of protecting the ‘Red Sole Design’ and has fought several lawsuits to protect the same. Recently in the case of Christian Louboutin, Christian Louboutin SAS v. Van Haren Schoenen BV Case (C 163/16), the Brussels Court of Appeal declared Louboutin to have been the creator of the distinguished red soled shoes, forcing Van Haren to cease production of its red-soled shoes as a result.
A table containing a list of trademarks belonging to Christian Louboutin in India can be found below for the convenience of our readers –