Delhi High Court remands single judge’s dismissal of Louboutin’s claim for exclusivity

India
  • Louboutin’s suit for trademark infringement and passing off was previously dismissed
  • Following an appeal, the Division Bench questioned whether a permanent injunction against trademark infringement can be dismissed at first hearing
  • The bench found that while the single judge was open to disagree with a coordinate bench, he could not have proceeded to deliver the decision without referring the matter to a larger bench

 

In Christian Louboutin SAS vs Abubaker & Ors (RFA (OS) (COMM) 13/2018 & CM 29064/2018), the Division Bench of the Delhi High Court set aside the decision of a single judge dismissing Louboutin’s claim for exclusivity in a single colour and remanded the matter back for further consideration by the judge.

Facts

Previously, the judge dismissed Louboutin’s suit for trademark infringement and passing off in relation to the above claim, on the following grounds:

  • The suit contained admissions, which according to the Civil Procedure Code (CPC) 1908, demanded a dismissal of suit.
  • A single colour does not qualify as a trademark under the Trademarks Act 1999. The decisions in Louboutin v Mr Pawan Kumar and Deere & Company v Mr Malkit Singh, which Louboutin relied on, were incorrect.
  • Section 30 of the Trademarks Act relating to the limits on the effect of registration disentitled Louboutin from seeking relief.

 

Figure 1. Louboutin’s registered marks in India

Decision

Louboutin appealed and the Division Bench set aside the decision of the single judge, emphasising the following questions of law to be considered:

  • Can a suit seeking a permanent injunction against trademark infringement be dismissed at the first hearing of the suit invoking provisions of CPC based on admissions?
  • Can it be said that the plain disclosed admissions of Louboutin would disentitle it to the reliefs prayed for in the suit?

The Division Bench decided that, in the absence of the defendants appearing and filing their response, the question of whether there was any admission on the part of the plaintiff or the defendants did not arise.

Next, the Division Bench considered whether the single judge was justified in holding that “a single colour cannot under any circumstances be given the benefit for being used as an exclusively owned trademark of a manufacturer/seller etc” and that the device mark of Louboutin could not legally have been registered as a trademark.

The Division Bench decided that Section 30 of the Trademarks Act is a defence available to a defendant in an infringement suit. However, in a case such as this, it is doubtful that the court could on its own motion confront the plaintiff with this defence without the defendant raising it. Further, for the purposes of Section 30, whether the device mark is a functional feature that is utilitarian or aesthetic, or whether – as claimed by the plaintiff – it is an “arbitrary placement of a colour on an arbitrarily selected portion of a shoe, namely, the outsole of a shoe, to designate its origin” is not something that can be fully determined by the court on its own motion at the first hearing of the suit.

Finally, the Division Bench considered whether the single judge was justified in proceeding to dismiss the suit, disagreeing with the judgments of two coordinate benches of the High Court on the same issue, without referring the matter to a larger bench.

The Division Bench decided that while the single judge was open to disagree with a coordinate bench, he could not have proceeded to deliver the impugned decision without referring the matter to a larger bench.

Comment

The Division Bench’s approach appears to be correct. However, given the provisions of the Trademarks Act, it remains to be seen whether Louboutin’s appeal will be successful. Until then, the company could utilise the earlier favourable decision in Louboutin v Mr Pawan Kumar.

 

The views of the authors in this article are personal and do not constitute legal/professional advice from Khaitan & Co.

Unlock unlimited access to all WTR content