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1. The plaintiff company Christian Louboutin SAS has filed this suit seeking reliefs of injunction against the infringement of its trademark, passing off, damages etc. Plaintiff has sought the reliefs as prayed for in the suit, vide para 54 (a) of the plaint, by pleading exclusive ownership of its registered trademarks „RED SOLE‟ under the registration nos.1922048, 2341890 and 2341891 granted by the Registrar of Trademarks. The registration granted, and with respect to which reliefs are claimed in the suit, being „RED SOLE‟ is not a wordmark but it is literally a red colour shade applied to the soles of the ladies footwear manufactured by the plaintiff.

2. The relevant registrations with respect to which plaintiff claims exclusive ownership are contained in para 20 of the plaint and this para is scanned below:-

3. The plaintiff pleads that the defendants are carrying on its business at two outlets located at Mumbai. The defendant no.3/entity M/s Veronica is owned by the defendant nos.1 and 2. Since the defendants are selling shoes by colouring red the soles of their shoes, therefore it is the case of the plaintiff that there results infringement of the registered trademarks of the plaintiff being red colour applied to the soles of the ladies footwear as stated in paras 20 and 21 of the plaint read with para 54(a) prayer clause. Plaintiff also pleads that defendants are passing off their footwear as that of the plaintiff because of use of the red colour in the soles of the ladies footwear sold by the defendants and that there is passing off, notwithstanding that the defendants trademark for its shoes is a wordmark VERONICA. These aspects with respect to the infringement by the defendants and comparison to the trademarks of the plaintiff, as also the aspect of passing off is stated by the plaintiff in paras 35(iv) & 35(v) of the plaint, and which paras read as under:-

(iii) The second reason for holding as misconceived the argument raised by the plaintiff by referring to colour i.e in singular colour in Section 10(2) of the Trade Marks Act is that when in Section 10(2) of the Trade Marks Act the expressions/words 'trademark' and 'colour' are used, they are used for referring to the trademark used which is not a colour and therefore the entitlement to use a trademark which is not a colour for all colours to be applied to a trademark. For example when a wordmark which is registered as a trademark then since it is only a wordmark trademark with limitation for use of the trademark only to be used in a particular colour or combination of colours of the trademark, then while depicting the wordmark trademark, the same can be depicted/shown/displayed in any colour or combination of colours. The use of colour in singular in Section 10(2) of the Trade Marks Act has therefore no purpose to enable/entitle that a single colour can be a trademark, and especially so when the definition of mark and trademark under the Trade Marks Act require combination of colours and that a single colour is not and cannot be a mark and a trademark. The reason for existence of Section 10(2) of the Trade Marks Act is not to add to the definitions of mark and trademark under the of the Trade Marks Act.

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(ii) The contention of the plaintiff that use of the colour red by the defendants on the soles of ladies footwear being sold by the defendants will cause passing off is a misconceived argument for three reasons. Firstly, as already discussed above a single colour cannot become a trademark. Once a single colour is not capable of being a trademark, then the plaintiff cannot claim rights in one colour as a trademark for exclusive use of the plaintiff simply because the plaintiff may have got/used the single colour as its trademark. Secondly, the issue of passing off would arise only if there was disentitlement in the defendants to not use the red colour shade in the soles of the ladies footwear being manufactured and sold by the defendants, but there is no such disentitlement for the defendants because the user by the defendants of the red colour shade on the footwear is pursuant to the legal rights conferred upon the defendants under Section 30(2)(a) of the Trade Marks Act as already discussed above. The defendants are entitled in view of Section 30(2)(a) of the Trade Marks Act to use red colour in the soles of their footwear, even if the plaintiff is held to be the owner of their trademarks stated in para 20 of the plaint, as the use of red colour in the soles is a characteristic of the product shoe and as already discussed in detail above. The third aspect is that the issue of passing off and deception would arise if the defendants were not selling their goods under any wordmark trademark, and simply by applying red colour to the soles of the ladies shoes/footwear, but that is not the case herein, since the defendants are very much using a wordmark trademark being „VERONICA‟. It bears note that admittedly plaintiff is also using a wordmark trademark viz "CHRISTIAN LOUBOUTIN", and which wordmark trademark of the plaintiff is completely different than the wordmark trademark of the defendants viz „VERONICA‟ and therefore there does not arise any question whatsoever of any deception or confusion.