IPR and Fashion Law: ‘Sole Keeping the Shoe Together’.

Introduction

When one thinks of this, it stands out and appears as a niche, unexplored area of law. And while it is still developing in India, it’s developing nonetheless.

Owing to the creative nature of the field, intellectual property manifests in the form of clothes designed, distinct accessories and jewellery made, and the brand images and logos that exist, much like other fields too. All of these are vulnerable to unfair use and exploitation and hence need the protection of rights such as Trademarks, Copyrights, Designs etc.

The huge issue of counterfeits and knockoffs in the everyday Indian markets like Sarojini, trademark disputes between fashion houses and brands etc. are all real-life examples that are a testament to the need for IPR protection in this field.

An analysis of a significant case would provide better insight into the intersection of the two fields, IPR and Fashion—

Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors., 2017

  • Facts

The plaintiff, while lacking the need for an introduction, is a luxury brand home to high-end, renowned products, one of which happens to be the signature “Red sole” high-heeled shoes. It happens to be footwear with a red shade applied to the soles. This feature is the subject of the case at hand and is synonymous with the very brand image of the plaintiff. Owing to the feature’s – red, lacquer sole— fame, trademark registrations have been made in different parts of the world, and in India too, for a specific tone of red (in shoes) that appears on the outsole of the footwear. The Defendant, Pawan Kumar, is the sole proprietor of “Kamal Family Footwear” which is engaged in the sale of women’s shoes and accessories. The defendant made unauthorised use of the plaintiff’s trademark in ladies’ shoes sold by them. The Plaintiff sought an order for a permanent injunction against the Defendants and the parties acting on their behalf, restraining them from manufacturing, selling/offering for sale, or advertising directly or indirectly the footwear or any goods containing the trademark “Red Sole”.

  • Issues
    1. Whether the plaintiff’s trademark has acquired a well-known character
    2. Whether the defendants infringed the plaintiff’s trademark
  • Arguments
    1. Plaintiff:

Plaintiff’s high fashion items have received widespread international acclaim. The plaintiff has two stores in India, one in Mumbai and one in Delhi. For the past three years, Plaintiff’s brand has topped the Luxury Institute’s Annual Luxury Brand Status Index (LBSI). Trade Mark offices throughout the globe have acknowledged the plaintiff’s ‘RED SOLE’ trademark for its distinctiveness. The ‘RED SOLE’ trademark has been sought for and registered in numerous jurisdictions, including in India. Documents and evidence showing the reputation, goodwill, and sale of the plaintiff’s trademark in India and abroad are provided and proved.

  1. Defendants:

As for the defendants, the first and third parties did not appear before the court, the rest did file written statements but there was no representation for them at court either.

  1. Ratio Decidendi

The court observed that the plaintiff’s “Red sole” trademark has acquired a well-known character due to the following reasons—

  • The plaintiff is a well-known luxury brand with a 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; vii. The plaintiff’s website is accessible to consumers in India and has 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 court also scrutinised evidence in the form of photographs of the counterfeit, cash memos of purchases from the defendants and a report of the Local Commissioner, furnished by the plaintiff to examine the possibility of infringement of the trademark by the defendant.
  1. Judgement

It was held by the Delhi High court that the trademark in question “Red sole” was well-known and was infringed by the sale of the red sole shoes by the Defendant. An interim order restraining the defendants from manufacturing, selling, offering for sale or directly/indirectly dealing in footwear, including ladies’ shoes or any other goods bearing the plaintiff’s registered trademark for the “RED SOLE” or any other mark which is identical or deceptively similar to the plaintiff’s aforesaid trademark, was passed.

Damages amounting to Rs 15,093 were to be paid by defendants no 1 to 3 and Rs 1,48, 088 was to be paid by defendants no 4 and 5 in favour of the plaintiff. Costs were also awarded to be paid on account of the legal expenses.[ Christian Louboutin Sas vs Mr Pawan Kumar & Ors,12 December 2017].

Conclusion

The courts must make sure that the standard of uniqueness is extremely severe when granting non-traditional trademarks, such as single-color trademarks. Another important problem is the functionality concept, which states that a colour mark cannot be functional in relation to a certain good or service.

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