TM suits cannot be summarily dismissed: The RED SOLE case

By Pravin Anand, Dhruv Anand and Udita M Patro, Anand and Anand
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Christian Louboutin’s RED SOLE trademark, comprising the unique placement of the colour red on the outsole of a shoe, has had a chequered history the world over as far as its enforcement is concerned. This trademark has been the subject matter of litigation in India, too.

The RED SOLE trademark was granted trademark registration in India in November, 2014. Being a non-conventional trademark, it took almost four years for the trademark registration to be granted, only once the registrar was satisfied of the distinctiveness of the trademark.

Pravin Anand
Managing partner
Anand and Anand

Christian Louboutin then filed four lawsuits between 2015 and 2018, and in each of them it was successfully able to obtain injunctions in its favour against third parties, restraining them from manufacturing, offering for sale, or otherwise dealing in shoes bearing the RED SOLE trademark. The Delhi High Court, in one of these matters, was also pleased to grant a well-known declaration to the RED SOLE trademark.

Then in May, 2018, when Christian Louboutin filed a lawsuit against a certain chain of stores found dealing in infringing RED SOLE shoes, the single judge dismissed the lawsuit of the plaintiff on the very first day, holding that Indian trademark law did not allow for registration of “single colours” as trademarks.

Christian Louboutin preferred an appeal against this decision of the single judge, which was heard by a Division Bench of Delhi High Court.

Dhruv Anand
Partner
Anand and Anand

Christian Louboutin argued that the lawsuit had been dismissed in a summary manner, without due cause, and that the RED SOLE trademark was a valid trademark, as it has all the requisite hallmarks required under Indian law [section 2(zb) of the Trademarks Act, 1999]:

(1) It is a mark (though the definition of “mark” under the Trademarks Act, 1999, does not specifically mention a single colour, it is an inclusive definition. Further, it allows for a “device mark” and the RED SOLE trademark being a combination of a specific pantone/colour and its placement, can be categorized as a device trademark);

(2) The mark is capable of being represented graphically; and

(3) The mark is capable of distinguishing the goods and services of one person from those of the others.

The appellant further submitted that section 31 of the Trademarks Act 1999 provided for prima facie validity of a registered trademark, and in such a scenario, without any defence of invalidity having been taken by the defendants, a summary dismissal of the lawsuit was not legally tenable. After hearing both the parties, the Division Bench in an order dated 11 April 2019, allowed Christian Louboutin’s appeal and held the following:

That the single judge had erred by invoking order XII, rule 6 of the Civil Procedure Code, 1908 (which provides for judgment on admissions), to dismiss the lawsuit of the plaintiff. That by its very nature, order XII, rule 6 envisages the “other party” making known its case, and therefore a lawsuit cannot be dismissed by invoking this provision at the first hearing;

That the plaintiff is the holder of a registered trademark and under section 31 of the Trademarks Act, 1999 there is a prima facie presumption of validity of a trademark that is registered. That further it was not the case of the defendants that they, or anyone else, had applied for cancellation of the plaintiff’s trademark. In the circumstances, the exercise undertaken by the single judge at the very first hearing of the trademark infringement suit was uncalled for; and

The Division Bench further took cognizance of the other orders passed in favour of the plaintiff upholding the validity of the RED SOLE trademark, and held that while it was perhaps open to the single judge to disagree with a co-ordinate bench, he could not have proceeded to deliver the impugned judgment without referring the matter to a larger bench.

With the above-mentioned findings, the Division Bench reversed the findings of the single judge and restored the lawsuit for further proceedings.

This judgment comes in the wake of others passed by the Division Bench of Delhi High Court, which have held that summary disposal of an intellectual property lawsuit on the first day itself is unwarranted. These Judgments underline the golden principle that the court cannot position itself as an adversary in the absence of the defendants to pass a judgment on the first day of hearing in an infringement lawsuit.

Pravin Anand is the managing partner and Dhruv Anand is a partner at Anand and Anand. Managing associate Udita M Patro also contributed to this article

Anand-and-Anand

Anand and Anand
B-41, Nizamuddin East,
New Delhi 110013, India
Contact details:
Tel: +91 120 405 9300
Email: pravin@anandandanand.com
Email: dhruv@anandandanand.com