9 August 2018Trademarks

Counterfeiting win for Louboutin at Delhi High Court

The Delhi High Court recently granted a permanent injunction against individuals who were infringing the well-known red sole trademark of fashion brand Christian Louboutin.

Louboutin’s victory resulted from its complaint against Ashish Bansal “and another”, based in Delhi.

The individuals had reportedly been selling footwear with red soles.

Louboutin requested a permanent injunction and punitive damages for counterfeiting, trademark infringement, trade dress infringement, and use of a deceptively similar domain name.

The red sole is registered with the Indian Trademark Registry (trademark number 1,922,048), and Louboutin also claimed that it had acquired distinctiveness as a well-known mark.

On July 31, Justice Yogesh Khanna said that consumers in India identify Louboutin as the only proprietor of the red sole mark, and any use of the mark by an unrelated party takes undue advantage of Louboutin’s reputation and goodwill.

He concluded that the defendants adapted an identical or deceptively similar mark to that of Louboutin for use on identical goods to those of the company.

Khanna granted a permanent injunction to prevent the defendants from using the mark and awarded Louboutin Rs2 million ($29,140) in punitive damages.

He also ordered the defendants to deliver all infringing products and materials to Louboutin for destruction.

The judgment comes despite an earlier ruling going against Louboutin.

In another red sole infringement complaint, the Delhi High Court held in May that a single colour cannot receive trademark protection.

Justice Valmiki Mehta said that while a combination of colours can be registered as a trademark in India, a single colour cannot. He added that acquired distinctiveness is not sufficient to outweigh the single colour rule.

In Khanna’s decision last month, he did not consider the validity of the mark. Instead, he said that if the defendant’s mark is visually and phonetically similar to the asserted mark, no further assessment is necessary to support a finding of infringement.

He did note that the red sole mark was “granted after rigorous examination” by the registry and is “unique in its own accord”.

Legal blog Spicy IP  noted that Khanna’s ruling “appears to have taken a diametrically opposite view” to that of Mehta.

“On the face of it, one will have to assume that these decisions are at odds with each other,” Spicy IP said.

Louboutin’s famous red sole has recently been at the centre of a trademark dispute in Europe.

In June, the Court of Justice of the European Union delivered good news to Louboutin.

It said that under EU law, a sign consisting of a colour applied to the sole of a high-heel shoe (such as Louboutin’s) does not consist exclusively of the “shape” within the meaning of legal provisions that prevent trademark registration.

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More on this story

6 February 2018   An advocate general has said that the combination of a colour and a shape may be refused trademark protection, in a blow to shoe maker Christian Louboutin.
12 June 2018   Europe’s highest court has today issued a seemingly positive ruling to fashion company Christian Louboutin after saying that a trademark for its red-sole high heel does not meet legal provisions that prevent certain shape marks being registered.
6 November 2018   The High Court of Delhi has directed Indian e-commerce platform Darveys.com to ensure that each product sold on its platform is not a counterfeit, in a case brought by luxury brand Christian Louboutin.