Recognition of A Trademark As Well – Known
Earlier a trademark used to get the status of a well-known trademark only after a long and tedious process of court proceedings preceded by a trademark infringement or by objections raised by others at the time of registering the trademark. After the new amendments came into force the process to acquire, the status of a well-known trademark has become easier and less expensive. Now, the question arises that whether inclusion in the list of well-known Trade Mark, the only way by which Trade mark can obtain the status of a ‘Well Known Trade Mark’? The answer to this question is given by the latest judgement of Delhi High Court in the case of “Christian Louboutin Sas vs Mr Pawan Kumar & Ors on 12 December 2017”.
Plaintiff is a company incorporated under French laws which derived its name from Mr. Christian Louboutin, famous designer of high end luxury products known for his signature ‘RED SOLE’ high heeled shoes. The plaintiff company has gained an immense international recognition for its luxury fashion products. It has a limited authorised distribution channel due to which India has two branches of this very luxury brand, one in Mumbai and another in Delhi.
Since 1992, the plaintiff started producing all his shoes with a specific tone of red colour that became an undisputed sole identifier as plaintiff’s product and thus the ‘RED SOUL’ trademark became the signature of plaintiff. This distinctive nature is also recognised by trademark offices all over the world. The plaintiff’s trademark is internationally recognizable and has extensive usage in India. Further, the goodwill and renowned reputation of the ‘RED SOLE’ trademark has spilled over into India from various countries around the world and consumers were aware of this goodwill and reputation even before the plaintiff’s trademark was first formally launched in India.
Defendants are in the business of selling women’s shoes and accessories. The plaintiff through extensive market survey in February, 2016 learnt of the defendants’ use of the plaintiff’s ‘RED SOLE’ trademark in ladies’ shoes being sold by them in different shops as well as through online portals.
It is pertinent to note that the whole proceeding was held ex-parte due to absence of defendants during the court’s hearing.
The plaintiff claimed for the following through their petition:
- An order for permanent injunction against defendants, partners, offices, servants, agents, distributors, stockists and manufacturers from manufacturing, selling, advertising, directly or indirectly dealing with the goods bearing plaintiff’s registered trademark and also restraining them from using their registered trademark.
- An order to deliver all the infringing finished and unfinished materials and accessories, packaging, labels, dies, blocks, stationery and other material bearing any of the Plaintiff’s trademarks or bearing any other mark(s)/logo/device similar thereto, for erasure/destruction.
- An order to render all their accounts of all sums earned by them through infringing their trademark and cost of proceedings.
- An order to declare the plaintiff’s trademarks as “Well-known” trademarks.
It was held that the plaintiff’s trademarks have acquired well-known status for the following reasons:
- The plaintiff is well-known luxury brand with presence in over 60 countries including India
- The plaintiff has been using its ‘RED SOLE’ trademarks extensively and continuously since 1992
- The plaintiff’s ‘RED SOLE’ trademarks are known to customers throughout India.
- The plaintiff is recognised as a sole licensor of the Christian Louboutin trademarks and has successfully enforced its rights in the said trademarks.
- The plaintiff has extensively promoted its luxury products under its Christian Louboutin trademarks including the ‘RED SOLE’ trademark in India.
- The plaintiff has extensive presence over the Internet.
- The plaintiff’s website is accessible to consumers in India and have served in making customers in India aware of the plaintiff, the various luxury products of the plaintiff and the plaintiff’s well-known trademarks including the ‘RED SOLE’ trademark.
- The plaintiff has received various awards and accolades for the luxury products made available under the plaintiff’s well- known trademarks including the ‘RED SOLE’ trademark.
The defendants were ordered to pay the plaintiff the damages for infringement as well as the cost of proceedings that summed up to Rupees Ten Lacks.
It can be well observed that the status of Well-known mark can be given to the Trade Mark by considering the above mentioned reasons. Hence, the list of well-known Trade mark is not the only criteria to consider the well-knowness of the mark. In other words, the Court upheld and verified the provision of the Trade Marks Act, 1999 [Section 11(4)-(6)] which lays down the criteria of well-known trade mark.
Author: M.Sai Krupa, Intern at IP and Legal Filings and can be reached at firstname.lastname@example.org.