RFA (OS)(COMM) 13/2018 & CM 29064/2018
The Plaintiff (appellant) Christian Louboutin Sas is a manufacturing company bearing a 'Red sole' trademark.
The defendants Abu Baker are associated with the similar business and carrying on its business at two outlets in Mumbai. The defendant no.3/entity M/s Veronica is owned by the defendant nos.1 and 2.
The Plaintiff's, "RED SOLE" trademark has been registered in Clause 25 with No. 1922048 in respect of the shoes, except orthopaedic footwear, with the sole condition and disclaimer that "the mark shall be limited to the colour "Red".
The plaintiff conducted a market survey and found out that, the defendants use plaintiff's "Red Sole" trademark on its ladies shoes. Thus, the plaintiff filled a suit against defendant 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.
The same suit was dismissed by the learned single judge. plaintiff appealed in high court against the judgment of learned judge.
Can a single colour ever become a trademark as defined in the Marks Act, 1999?
- Order XII Rule 6 CPC Judgment on admissions.
- Section 30(2)(a) in The Trade Marks Act, 1999
- Section 31 in The Trade Marks Act, 1999
- Sections 2(m)and 2(zb)of the Trade Marks Act, 1999
The Plaintiff has explained that the aforementioned "RED trademark is in fact a device mark wherein a specific tone of red colour is applied to the outsole of a shoe and "is unique in its own and became known in the world of fashion only after being introduced by the Plaintiff".
The plaintiff further averred 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".
The plaintiff further claims that the "RED SOLE" trademark is internationally recognizable and has extensive usage in India; the 'RED SOLE' trademark enjoys trans-border reputation in India; the goodwill and renown of the 'RED SOLE' trademark has spilled over into India from various countries and that the consumers are well aware of this goodwill and reputation even before the Plaintiffs trademark was first formally launched in India.
According to the court, the finding of the Single Judge that a single colour cannot be claimed as a trademark was not something that be finally determined suo motu by the court at the very first hearing of the suit, particularly in view of the fact that under Section 31 was a prima facie presumption of validity of the plaintiff's trademark. Moreover, whether the plaintiff's trademark was unique or registered in favour of the plaintiff could not be definitely concluded by the Single Judge at the first stage of the suit.
Whether the plaintiff's claim that its trademark was not a single colour trademark, but qualified as a device mark consisting of an arbitrary placement of a particular shade of the colour red at a specific part of a shoe, according to the court, had to be tested further by the court on the basis of pleadings and evidence.
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