On 12th December 2017, a Single Judge Bench namely, Justice Mukta Gupta, ruled in favour of the French Designer Christian Louboutin’s RED SOLE shoes as a well-known trademark and granting a permanent injunction to the luxury brand owner as its red sole shoes were sold as fakes by two footwear traders in Karol Bagh, Delhi. The infringers were asked to pay compensation as they infringed on the trademark for over a year and a half. The court awarded damages and costs to the Brand.
[Case No. CS(COMM) 714/2016; Christian Louboutin SAS vs. Pawan Kumar & Ors.]
The background of the case is that the plaintiff company sells high end luxury products and is known for its RED SOLE high heeled shoes. The company has gained recognition internationally due to its luxury fashion products. In India it has two stores, one in Mumbai and the other in Delhi. The RED SOLE trademark has become the signature of the plaintiff company and it has applied for registrations in various countries including India (TM No. 1922048) which has been accepted in various jurisdictions.
The infringers Pawan Kumar, sole proprietor of Kamal Family Footwear and Kamal Footwear and Vijay Kumar, sole proprietor of Adra steps, sell women’s footwear and accessories. Both their shops are situated in Delhi.
Through a survey conducted at the beginning of 2016 the plaintiff company learned that the defendants were selling women’s footwear bearing the RED SOLE trademark of the plaintiff.
Summons were issued to the defendants on 2nd June 2016 restraining the defendants from using the identical or deceptively similar RED SOLE mark of the plaintiff. Despite the summons, no representative of the defendants appeared and the case proceeded ex-parte against all the defendants.
The plaintiff submitted various proofs demonstrating its mark to be well-known, not only in India, but globally (around 60 countries). It affirmed using the mark extensively and continuously since 1992, with Indian customers having knowledge about its brand and also its extensive promotion in India. It also demonstrated an extensive internet presence and how the Indians are aware of its use and products through the internet.
According to the Judge: The plaintiff’s trademark is internationally recognizable and has extensive usage in India. The ‘RED SOLE’ trademark also enjoys transborder reputation in India by virtue of a variety of factors including tourist travel, in-flight magazines, Internet and broadcasting of various films and television programmes. 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 plaintiff’s trademark was first formally launched in India.
Thus, on the basis of such findings the court issued a permanent injunction against the defendants restraining them from manufacturing, selling, marketing or advertising footwear having the RED SOLE trademark and furthermore declared the RED SOLE trademark a well-known status.
Due to 25% illegal turnover of the defendants, the profits earned during the period of infringement equal the amount to be paid to the plaintiff as damages. Damages to the tune of 15,093/- INR was awarded to the plaintiff against Kamal Family Footwear and 1,48,088/- INR was awarded to the plaintiff against Adra Steps. Cost of around 8,63,790/- INR was awarded which included the legal expense and the Local Commissioner fee.
The Court had referred to Hindustan Unilever Limited Vs. Reckitt Benckiser India Limited to arrive at the decision.
The use of judicial proceedings by luxury brand designers to protect their designs from infringement and fakes, combined with the favourable judgment granted by the courts, speaks volumes on the understanding of Intellectual Property. The “RED” color on shoes became the main identification of the trademark associated exclusively with the French designer, thus granting the injunction protecting the mark from infringement and counterfeiting was the right decision.
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