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2023 Supreme(Del) 3639
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Christian Louboutin Sas & Anr. – Appellants
Versus
M/s The Shoe Boutique-shutiq – Respondent
CS(COMM) 583 of 2023 and I.A. 15884 of 2023-15889 of 2023
Decided On : 22-08-2023
Mr. Pravin Anand, Mr. Dhruv Anand, Ms. Udita Patro & Ms. Nimrat Singh, Advocates, for the Plaintiffs.
Mr. Amit Verma, Mr. Siddhartha Luthra, Advocates along with Mr. Kunal Makkar, for the Defendant.
The central legal point established in the judgment is the protection of intellectual property rights and prevention of passing off of goods.
Headnote:
Commercial Courts Act - Intellectual Property Rights - Section 12A, Section 149 r/w Section 151 CPC - [CS(COMM) 583/2023 & and I.A. 15884/2023 (for stay), and I.A. 15885/2023 (for discovery)] - The court discussed the provisions of the Commercial Courts Act and the Code of Civil Procedure related to exemption from filing documents, leave to file additional documents, exemption from pre-litigation mediation, and seeking further time to pay court fees. The court allowed exemption, disposed of the application for additional documents, allowed exemption from pre-litigation mediation, and directed the Plaintiffs to file court fees within one week. The court also registered the suit, issued summons to the Defendant, and decreed the suit in favor of the Plaintiffs.
Fact of the Case:
The Plaintiffs, Christian Louboutin SAS and Clermon ET Associes, filed a suit against the Defendant, M/s Shoe Boutique (Shutiq), for manufacturing and selling shoes identical to the Plaintiffs' distinctive designs, including the 'RED SOLE' and 'SPIKED SHOE STYLE'. The Plaintiffs claimed that the Defendant's actions were an attempt to pass off its goods as the goods of the Plaintiffs.
Finding of the Court:
The court found that the Defendant had imitated the essential features of the Plaintiffs' footwear and decreed the suit in favor of the Plaintiffs. The court also directed the Defendant to abide by an undertaking not to copy or imitate the Plaintiffs' designs and imposed damages and costs on the Defendant.
Issues: The issues involved the infringement of intellectual property rights, passing off of goods, and breach of undertaking by the Defendant.
Ratio Decidendi: The court held that the Defendant's actions constituted a clear intention to imitate and gain monetarily on the strength of the reputation and goodwill of the Plaintiffs, leading to a decree in favor of the Plaintiffs.
Final Decision: The suit was decreed in favor of the Plaintiffs, and the Defendant was directed to abide by an undertaking not to copy or imitate the Plaintiffs' designs, with the imposition of damages and costs.
JUDGMENT
Prathiba M. Singh, J.
1. This hearing has been done through hybrid mode.
I.A. 15887/2023 (for exemption)
2. This is an application seeking exemption from filing originals/cleared/translated copies of documents, left side margins, etc. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
3. Exemption is allowed, subject to all just exceptions.
I.A. 15886/2023 (for additional documents)
4. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, `Commercial Courts Act'). The Plaintiffs, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
5. Application is disposed of.
6. Accordingly, application is disposed of.
I.A. 15889/2023 (u/S 12A of the Commercial Courts Act)
7. This is an application seeking exemption from instituting pre- litigation mediation. In view of the fact that ex-parte urgent orders are sought and in terms of orders passed in Chandra Kishore Chaurasia v. R A Perfumery Works Private Ltd, 2022/DHC/004454, the application is allowed and disposed of.
I.A. 15888/2023 (u/S 149 r/w Section 151 CPC)
8. This is an application under Section 149 CPC filed by the Plaintiffs seeking further time to pay the entire court fees. Let the court fees be filed within one week.
9. Application is disposed of.
CS(COMM) 583/2023 & and I.A. 15884/2023 (for stay), and I.A. 15885/2023 (for discovery)
10. Let the plaint be registered as a suit.
11. Issue summons and notice to the Defendant.
12. Ld. counsel for the Defendant accepts summons and notice.
13. The present suit has been filed by Plaintiff No.1- Christian Louboutin SAS and Plaintiff No.2- Clermon ET Associes, France against the Defendant- M/s Shoe Boutique (Shutiq), a partnership firm which is involved in the manufacture and sale of shoes.
14. The case of the Plaintiffs is that they are entities existing in France. The first shop of the Plaintiffs is stated to have opened in 1991 in Paris. The Plaintiffs are known for the well-known `RED SOLE' shoes which are manufactured and sold by them. The manner in which the rights in intellectual property of Christian Louboutin, the founder was transferred to Plaintiff No. 2 - Clermon ET Associes, a trust holding all the IPR, is explained in paras 4 and 5 of the plaint. Plaintiff No.2- Christian Louboutin SAS is the exclusive licensee of all the IP from Plaintiff No.1. The `RED SOLE' on heeled shoes is a signature design of the Plaintiffs which is also registered as a trademark. Some very well-known celebrities have endorsed the Plaintiffs' products as detailed in the plaint. The shoes of the Plaintiffs have been depicted in well-known TV series and films including `Sex and the City Part-I & II', `Devil Wears Prada' and `The Proposal'.
15. The case of the Plaintiffs is that their shoes have acquired enormous reputation and goodwill not only globally but also in India. Various Indian and international magazines have depicted the Plaintiffs' shoes and advertisements. A perusal of the same would show that the mark has been extensively used across the world. The details of the trademark registration of the Plaintiffs are set out below:
| TRADEMARK | REG. NO. | DATE | CLASSES |
| [IMG] | 1922048 | 15.02.2010 | 25 |
| [IMG] | 2341893 | 01.06.2012 | 18 |
| [IMG] | 2341894 | 01.06.2012 | 25 |
16. In India, the Plaintiffs' products with the unique designs have been sold since February, 2012. The Plaintiffs have in view of the extensive reputation enjoyed by the Plaintiffs' designs have also started a "Stopfake" program by which consumers or anyone interested could provide details of either counterfeit or look alike products which would then be looked into by the Plaintiffs.
17. Apart from the `R
