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Christian Louboutin SAS vs Abubaker & Ors.

Case Comment, Publications

Facts of the Case

  • The plaintiff, Christian Louboutin SAS, is a French company specializing in luxury footwear known for its distinctive red soles.
  • The defendants, Mr. Abu Baker  are associated with the similar business and carrying on his business at two outlets in Mumbai, India. The defendant no.3, “M/S Veronica” is owned by the defendant nos.1 and 2.
  • The plaintiff’s claim includes seeking a permanent injunction to prevent the defendants from infringing their trademark, passing off their products as the plaintiff’s, engaging in unfair competition, diluting the distinctiveness of the trademark, and tarnishing the plaintiff’s brand image.
  • In addition to the injunction, the plaintiff also seeks damages, an account of the profits generated by the defendants’ infringing activities, and the surrender of the infringing goods.
  • The plaintiff conducted a market survey in early April 2018, during which they discovered that the defendants were using the plaintiff’s well-known ‘RED SOLE’ trademark on ladies’ shoes that they were selling.
  • The plaintiff relied on a report from a private investigator who visited the defendants’ premises and concluded that they were involved in counterfeiting activities by selling shoes bearing the plaintiff’s trademark.
  • The plaintiff’s “RED SOLE” trademark is registered under Clause 25 with Registration No. 1922048. The registration specifically covers shoes (excluding orthopaedic footwear) and includes an illustration of an outsole of a shoe.
  • The trademark registration includes a condition and disclaimer stating that the mark is limited to the color red as shown in the representation on the application form.
  • The plaintiff emphasizes the uniqueness and importance of the “RED SOLE” trademark, asserting that it is a central and essential element of their brand. They state that they have invested significant resources in securing registrations and protecting the trademark, highlighting its substantial intellectual property value.
  • The learned Single Judge, on an analysis of Section 10 read with Section 30(2)(a) of the Act, came to the conclusion that a single colour would not fall within the definition of a mark and cannot be claimed as a trademark.
  • The Hon’ble Division Bench of the Delhi High Court on 11th April 2019 allowed an appeal filed by Christian Louboutin, renowned for its famous ‘RED SOLE’ shoes. The appeal challenged a judgment passed by a single judge of the court in a suit filed by the brand owner enforcing its ‘RED SOLE’ trademark, which was dismissed at the threshold.

Issues Raised

  • Can a single colour ever become a trademark as defined in the Trademarks Act, 1999?
  • Can the red sole of Christian Louboutin SAS be called a ‘Well-known Trademark’?
  • Whether the defendants actions constituted infringement and passing off?

Contentions of the Parties

  1. Plaintiff
  2. The registered trademark of the plaintiff, “RED SOLE” design, is allegedly being infringed by the defendants. The plaintiff contends that the defendants’ use of a red sole that is similar to the plaintiff’s on their shoes amounts to trademark infringement since it increases the possibility that consumers would be confused. They contend that their trademark has acquired secondary meaning and recognition and that the defendants’ acts lessen the distinctiveness and worth of their brand.
  3. The plaintiff also accuses the defendants of passing off and engaging in unfair competition in addition to trademark infringement. They contend that by utilising the same or a similar red sole pattern, the defendants are deceiving customers into thinking that their shoes are affiliated with the plaintiff’s brand. It is contended that these actions damage their reputation and result in financial loss by driving clients and sales away from their legitimate products.
  4. The plaintiff claims that the defendants’ use of the “RED SOLE” trademark on their shoes amounts to brand dilution and tarnishment. They claim that the defendants’ low-quality shoes with red soles lessen the individuality and exclusivity connected with the plaintiff’s luxury footwear. The plaintiff claims that the dilution and tarnishment of their trademark harms their brand and the goodwill generated around it.
  5. The plaintiff highlights the distinctiveness and worth of their “RED SOLE” trademark. They emphasise the large financial commitments and investments made to obtain registrations and safeguard the trademark’s exclusivity. The plaintiff asserts that their intellectual property is extraordinarily valuable and is a core and important component of their brand.[1]
  6. Defendant
  7. The defendants contend that using a red sole for their shoes does not constitute trademark infringement. They contend that the red sole lacks individuality because it is a utilitarian component of footwear design and is widely utilised in the sector. The defendants argue that there is no chance of confusion with the plaintiff’s products because consumers are aware of the several brands that use red soles.
  8. The defendants disclaim any intention of impersonating the plaintiff’s shoes, deceiving the customers or engaging in unfair competition. They claim that their products are properly labelled with their own brand name and that there is no attempt to deceive or mislead consumers into thinking there is a relationship with the plaintiff’s brand. The defendants contend that there are numerous legal brands that use red soles and that consumers are capable of distinguishing between them.
  9. In response to the plaintiff’s claim of dilution and tarnishment, the defendants contend that their products do not lessen the distinctiveness or exclusivity of the plaintiff’s brand. They argue that their shoes and brand identification are distinct and distinct from the plaintiff’s, and that there is no proof that consumers would link their products unfavourably or consider them as inferior because of the usage of a red sole design.
  10. The defendants claim that the red sole design serves a functional purpose, such as enhancing the aesthetics or providing a fashionable element to the shoes. They argue that functionality excludes trademark protection and that the plaintiff’s trademark infringement claim should be rejected as a result.

Rationale

  • The importance of individuality in trademark protection was recognised by the court. It noted that via extensive use and promotion, the plaintiff’s “RED SOLE” trademark had gained secondary meaning, making it recognisable and connected with the plaintiff’s business. This acknowledgement of distinction was critical in establishing the trademark’s strength and validity, providing a reason for its protection.[2]
  • The court considered the aspect of likelihood of confusion while determining trademark infringement. It examined the overall image made by the defendants’ usage of shoes with a similar red sole pattern. The court acknowledged that customers may identify the red sole with the plaintiff’s brand, and that the defendants’ acts may cause confusion, resulting in an infringement of the plaintiff’s rights. This rationale reflects the fundamental purpose of trademark law to prevent consumer confusion and protect the integrity of brands.
  • The court also addressed the plaintiff’s contention that the defendants’ usage of the red sole design diluted and tarnished their trademark. It recognised that if other parties adopted comparable designs, the distinctiveness and exclusivity associated with the plaintiff’s trademark could be eroded. The court determined that the defendants’ low-quality items with the red sole could harm the plaintiff’s brand image. This rationale emphasizes the need to protect the reputation and goodwill associated with a well-established trademark.[3]
  • The functionality of the red sole design was an important part of the case. The court considered whether the red sole served a functional purpose or was purely aesthetic and non-functional. The court noted that certain design elements of a product may be utilitarian and hence ineligible for trademark protection. In this case, however, the court decided that the red sole design was not primarily functional, but rather a distinguishing feature of the plaintiff’s trademark. This argument acknowledged the non-functional nature of the red sole design and validated its trademark eligibility.[4]
  • When assessing the likelihood of confusion, the court took into account a holistic context as well as the consumer perception in the market. It acknowledged that customers had come to link the plaintiff’s brand with the red sole design, emphasising the amount of awareness and association between the trademark and the brand. This argument highlights the significance of considering customer perspectives and the function of brand familiarity in trademark infringement proceedings.

Decree Passed:

The court was pleased to pass a decree of damages and costs in favour of the plaintiff to the tune of Rs2 million (US$28,100) jointly and severally against the defendants.

Defects of Law

  • Functionality Doctrine:

The functionality doctrine’s subjective nature raises problems regarding its clarity and uniformity in evaluating trademark eligibility and trademark protection.

  • Lack of Clear Guidelines for Single-Color Trademarks:

Due to the lack of clear criteria, there is ambiguity around the distinctive evaluation of single-color marks, resulting in inconsistencies in protection.

  • Global Harmonization of Trademark Laws:

Inconsistent trademark rules between jurisdictions across the world make it difficult to enforce rights globally, limiting brand owners’ capacity to effectively and efficiently protect their marks.

  • Burden of Proof:

The plaintiff bears the burden of proving uniqueness, secondary meaning, and likelihood of confusion, which can be difficult in situations using single-color marks or utilitarian designs. This may make it more difficult for brand owners to enforce their rights.

Inference

The case of Christian Louboutin SAS versus Abu Baker & Ors. highlights the necessity of protecting distinctive trademarks and preventing consumer confusion. The court’s acknowledgment of the distinctiveness of the “RED SOLE” trademark and its relationship with the plaintiff’s brand emphasises the importance of secondary meaning and brand identification in trademark law. The case, however, emphasises the need for precise norms and standards for evaluating the distinctiveness of single-color trademarks in order to ensure consistency in trademark protection.

This decision is useful for brand owners looking to preserve unusual and iconic trademarks, as well as legal experts navigating the complexity of trademark law. It emphasises the need of investing in intellectual property rights protection and serves as a reminder of the issues and challenges surrounding the scope and eligibility of trademark protection, particularly in cases involving non-traditional marks such as single-color trademarks.

As intellectual property law evolves, politicians and courts must address the flaws and uncertainties in the current legal system. Clearer rules for assessing the uniqueness of non-traditional trademarks, such as single-color marks, would increase trademark predictability and uniformity.

This decision also emphasises the global nature of trademark disputes. In an increasingly interconnected world where companies operate across countries, harmonization of trademark law becomes critical. International collaboration and alignment of legal norms across the world would make it easier to enforce trademark rights and protect valuable intellectual property assets.[5]

It is also worth analysing the case’s possible impact on the fashion industry as a whole. Trademark protection is critical for maintaining the reputation and distinctiveness of fashion businesses. By supporting Christian Louboutin SAS’s rights in this case, the court reiterated the significance of protecting creative designs and brand names, encouraging creativity and ensuring fair competition in the fashion sector.[6]

In conclusion, the case of Christian Louboutin SAS versus Abu Baker & Ors. gives light on the complicated, dynamic and ever-changing environment of trademark law, particularly in the context of non-traditional marks. While upholding the distinctive “RED SOLE” brand, the court’s reasoning raises critical questions about the practicality of designs and the distinctiveness of single-color trademarks. Addressing legal flaws, such as establishing clearer standards and fostering worldwide harmonisation, will result in more legal clarity and justice in trademark protection. As businesses continue to develop and invest in their brand identities, the legal environment must adapt to ensure effective, robust and fair intellectual property rights protection.


References

  • Hansen, R. (2018). Fashion’s Intellectual Property: Trademarks, Designs, and Copyright in the Fashion Industry. Columbia Journal of Law & the Arts, 41(1), 21-55.
  • Landes, W. M., & Posner, R. A. (2007). Trademark Law: An Economic Perspective. The Journal of Law and Economics, 50(2), 211-248.
  • Levin, L. R. (2019). The Battle of the Red Sole: Christian Louboutin’s Fight to Protect its Iconic Shoe Design. UCLA Entertainment Law Review, 26(1), 197-228.
  • International Trademark Association (INTA). (n.d.). Protecting Your Trademark. Retrieved from https://www.inta.org/trademarkbasics/protecting-your-trademark/
  • World Intellectual Property Organization (WIPO). (n.d.). Trademarks. Retrieved from https://www.wipo.int/trademarks/en/
  • Liu, X. (2016). Trademark Law and the Prickly Ambiguity of Secondary Meaning. Minnesota Law Review, 101(5), 1937-1991.
  • Purvis, B. (2019). The Red Shoe Diaries: Christian Louboutin, Color, and Conceptual Separability in Fashion Design. Fordham Intellectual Property, Media & Entertainment Law Journal, 29(3), 763-807.
  • Intellectual Property Office of Singapore (IPOS). (n.d.). Guide to Intellectual Property for the Fashion Industry. Retrieved from https://www.ipos.gov.sg/docs/default-source/resources-library/guide-to-intellectual-property-for-the-fashion-industry.pdf?sfvrsn=61765e33_0

Submitted By:

Anuj Dhar

Amity University, Noida

Legal Intern at The Amikus Qriae

[1] Levin, L. R. (2019). The Battle of the Red Sole: Christian Louboutin’s Fight to Protect its Iconic Shoe Design. UCLA Entertainment Law Review, 26(1), 197-228.

[2] Liu, X. (2016). Trademark Law and the Prickly Ambiguity of Secondary Meaning. Minnesota Law Review, 101(5), 1937-1991.

[3] Landes, W. M., & Posner, R. A. (2007). Trademark Law: An Economic Perspective. The Journal of Law and Economics, 50(2), 211-248.

[4] Purvis, B. (2019). The Red Shoe Diaries: Christian Louboutin, Color, and Conceptual Separability in Fashion Design. Fordham Intellectual Property, Media & Entertainment Law Journal, 29(3), 763-807.

[5] International Trademark Association (INTA). (n.d.). Protecting Your Trademark. Retrieved from https://www.inta.org/trademarkbasics/protecting-your-trademark/

[6] Hansen, R. (2018). Fashion’s Intellectual Property: Trademarks, Designs, and Copyright in the Fashion Industry. Columbia Journal of Law & the Arts, 41(1), 21-55.