WELLKNOWN TRADE MARKS

DR.P.SREE SUDHA
ASSOCIATRE PROFESSOR, LL.D
Mr. Frederic Mostert, the former President of
International Trademark Association (INTA), as
follows:
 “The ordinary dictionary
meaning of “well-known”
according to Merriam Webster
is, among others, “widely
known” and “known to many”.
In the context of trademark
law, therefore, a well-known
mark can be characterized as a
mark which is known to a
substantial segment of the
relevant public in the sense of
being associated with the
particular goods or services.
1960’s Schechter’s basic views had been largely
digested into trademark tribunal wisdom:
 “If the owner of KODAK
should permit its use by
others on washing powders,
shoes, candy bars, or
cosmetics or if the Coca-Cola
Company should permit
COKE to be used for rain
coats, cigarette lighters, golf
balls, or jewelry not of its
manufacture, it would not
take long time for even these
giants in the trademark would
to be reduced to pigmy size”.
Paris Convention (1967)
 A special protective regime for marks
which are considered to be ‘well-
known’, was created by Article 6bis(1)
of the Paris Convention which permits
the countries of the Paris Union
 ...to refuse or to cancel the
registration, and to prohibit the use of
a trademark which constitutes a
reproduction, an imitation, or a
translation, liable to create confusion,
of a mark considered by the competent
authority of the country of registration
or use to be well-known in that
country as being already the mark of
a person entitled to the benefits of
this Convention and used for identical
or similar goods.
TRIPS
 Article 2 of the TRIPS Agreement
obliges Members of the WTO to
comply with Articles 1 through 12
of the Paris Convention.
 Article 16.2 provides that ‘Article
6bis of the Paris Convention
(1967) shall apply mutatis
mutandis to services’ and Article
16.3 provides that ‘Article 6bis of
the Paris Convention shall apply,
mutatis mutandis, to goods or
services which are not similar to
those in respect of which a
trademark is registered....
PROTECTION OF WELL-KNOWN MARKS
UNDER THE TM ACT
 Section 2(1)(zg) states: “well-
known trade mark,” in relation to
any goods or service, means a
mark which has become so to the
substantial segment of the public
which uses such goods or receives
such services that the use of such
mark in relation to other goods or
services would be likely to be
taken as indicating a connection in
the course of trade or rendering of
services between those goods or
services and a person using the
mark in relation to the first-
mentioned goods or services.”
Section 11. Relative grounds for refusal of
registration 11(2)–A trade mark which
(a) is identical with or similar to an earlier trade mark; and (b) is to be
registered for goods or services which are not similar to those for which
the earlier trade mark is registered in the name of a different proprietor,
shall not be registered, if or to the extent, the earlier trade mark is a well-
known trade mark in India and the use of the later mark without due cause
would take unfair advantage of or be detrimental to the distinctive
character or repute of the earlier trade mark.
11(6)–The Registrar shall, while determining whether a trade mark is a well-
known trade mark, take into account any fact which he considers relevant
for determining a trade mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of
the public including knowledge in India obtained as a result of promotion
of the trade mark.
(ii) the duration, extent and geographical area of any use of that trade mark
Section 11
(iii) the duration, extent and geographical area of any
promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the
gods or services to which the trade mark applies. (iv) the
duration and geographical area of any registration of or
any publication for registration of that trade mark under
this Act to the extent they reflect the use or recognition of
the trade mark.
(v) the record of successful enforcement of the rights in that
trade mark, in particular, the extent to which the trade
mark has been recognised as a well-known trade mark by
any court on Registrar under that record.
Section 11
11(7) – The Registrar shall, while determining as to whether a trade mark is
known or recognised in a relevant section of the public for the purposes of
sub-section (6), take into account: (i) the number of actual or potential
consumers of the goods or services. (ii) the number of persons involved in
the channels of distribution of the goods or services. (iii) the business
circles dealing with the goods or services. to which that trade mark applies.
11(9) – The Registrar shall not require as a condition, for determining
whether a trade mark is a well-known trade mark, any of the following,
namely:- (i) that the trade mark has been used in India; (ii) that the trade
mark has been registered; (iii) That the application for registration of the
trade mark has been filed in India; (iv) That the trade mark— a. Is well
known in; or b. Has been registered in; or
c. In respect of which an application for registration has been filed in, any
jurisdiction other than India; or (v) that the trade mark is well-known to the
public at large in India
Provisions related to well-known trademarks

 Rule 124 of Trade Mark Rules 2017

 This rule permits the trademark owners to file a request
for grant of "well-known" trademark to the Registrar in
form TM-M. Before the coming up of this rule, a mark
was declared well-known only after proceedings,
rectification and opposition held before the Hon'ble
courts. With the advent of this rule and the procedure laid
thereof, a trademark owner can request for a well-known
trademark without getting into any proceedings or
rectifications. Rule 124 ensures a trademark to be granted
the tag of "well-known" merely by an application of
request to the Registry.
Trademarks Act, 1999

i. 11 (2) Protection of well-known marks across all classes

The provision of this section extends the ambit of protection provided to
the well-known trademarks. According to this clause, well-known
trademarks are to be recognised and protected across all the classes of
goods and services. Relevant portion of the section has been
reproduced herein:
"A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered, if or to the extent, the earlier trade
mark is a well-known trade mark in India and the use of the later mark
without due cause would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier trade mark."
Trademarks Act, 1999

ii. 11 (6) Factors taken into consideration while determining the trademark as well-known
A Joint Resolution Concerning Provisions on the Protection of Well-Known Marks was
adopted by WIPO in the year 1999 in order to protect the well-known marks from
misuse and infringement, wherein various factors to determine a well-known trademark
was enlisted. India being a member of World Trade Organisation, adopted these factors
and enshrined it in clause 6 of Section 11 of the Trademarks Act. These determining
factors includes :
 Knowledge about the mark in relevant sections of the public;
 the duration, extent and geographical area in which the trademark is used;
 the duration, extent and geographical area in which the trademark is promoted with
respect to the goods and services to which it applies;
 registration or application for registration of the trademark to the extent they reflect the
use or recognition of the trade mark;
 the record of successful enforcement of the rights in that trade mark including the record
stating that the trademark has been recognised as well known by any court or Registrar.
Trademarks Act, 1999

iii. 11 (9) – Conditions not required for well-known trademark registration

The section specifically mentions certain conditions which need not be required
for the purpose of granting of well-known trademark. These conditions are-
That the TM has been used in India;
That the TM has been registered;
That the application for registration of the trade mark has been filed in India;
That the trade mark is well known in or registered in any other jurisdiction other
than India;
That the trademark is well-known to the public at large in India.
It can thus be stated that for a trademark to be granted protection in India, it is
not necessary that the mark owner has his business in India or its trademark is
registered within India, nor is it required that the trademark is known to the
masses as a whole.3 Thus, the particular provision provide for the concept of
trans-border reputation of trademark.
Trademarks Act, 1999

iv. 11 (10) –Obligation on the Registrar

It is an obligation on the registrar that in case of a dispute and/or
infringement the registrar must protect the interest of the well-known
trademark against the identical ones and also must take into consideration
and notice the ill intention and malafide motive of the complainant or the
opponent.
Filing of a well-known trademark
With the incorporation of the new Trademark Rules 2017, a trademark owner
can directly file an application for a well-known trademark to the Registrar.
The said application of request should be accompanied with a statement of
case, relevant documents, evidence and a fee of Rs. 1,00,000/- which has
already been prescribed. It is also mandatory that the application is to be
filed online through comprehensive e-filing services of trademark. Once the
application is received, the application shall be considered in accordance to
the documents submitted
Documents needed to be submitted
while filing application
 Statement of case – mentioning the claimant's right on the trademark and
describing the claim of trademark to be a well-known trademark.
 Details of successful enforcement of rights in case the trademark has been
recognised as well-known by the court in India or TM Registrar.
 Copy of judgment of any court or the Registrar wherein the trademark has been
recognised as well-known.
 Evidences showing the claimant's right and justifying his claim. Such
evidences shall include data/documents showing-
 Use of trademark, or any application filed for registration of trademark, or registration
obtained.
 Annual sale turnover of the business of the claimant.
 Actual or potential number of customers under the said trademark.
 Publicity and advertisement of the said trademark along with the expenses incurred
thereof.
 Knowledge or recognition of the trademark in relevant section of public across the
globe.
Trademarks Act, 1999

 All the documents along with the evidence is needed to be submitted in a PDF
format with resolution of 200 X 100 dpi on A4 size paper and the total size of the
documents not exceeding 10 MB.
 Remedies available for the trademark owner on misuse or infringement of well-
known trademark
 Prevent registration of similar and deceptive similar trademark in respect to all
class of goods and services.
 Request removal of infringing mark.
 Prevent incorporation of the trademark in the name or logo of any organization or
corporate name.
Punitive damages- Judiciary has opined in several cases that punitive damages shall
prevent the infringers from using and causing dilution of well-known trademarks.
In case of Time Incorporated v. Lokesh Srivastava [2005 (30) PTC 3 (Del.)], the
court held that in IP cases the court shall grant both punitive and compensatory
damages. In the instant case, the court granted Rs. 5 lakh as punitive damage and
Rs. 5 lakh as compensatory damage to the plaintiff for the reason of infringement.
Section 29 – Infringement of registered
trade marks
 29(4) – A registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which –
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar
to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the
use of the mark without due cause takes unfair advantage of
or is detrimental to, the distinctive character or repute of the
registered trade mark.
Case Law
 Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. [AIR
1969 Bom. 24]
 Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors [AIR
1985 All. 242].
 Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan
[AIR 1994 Del. 239]
 Kirloskar Diesel Recon Private Ltd. & Anr. v. Kirloskar
Proprietary Ltd. & Ors [AIR 1996 Bom. 149].
 Caterpillar Inc. v. Mehtab Ahmed [2002 (25) PTC 438 (Del.)]
 Honda Motors Co. Ltd. v. Charanjit Singh & Ors [2003 (26)
PTC 1 (Del.)].
Case Law
 Hamdard National Foundation v. Abdul Jalil [2008 (38)
PTC 109 (Del.)].
 Ford Motor Co. & Anr. v. Mrs. C R Borman & Anr. [2008
(2) CTMR 474 (Delhi) (DB)].
 ITC Ltd. v. Philip Morris Products SA & Ors [2010 (42)
PTC 572 (Del.)].
 Chorion Rights Ltd. v. Ishan Apparel & Ors [2010 (43)
PTC 616 (Del.)].
Case Analysis
 The Mercedes Benz Case –
 Decided in 1993 by the High Court of
Delhi, this was perhaps the first Indian
ruling that looked in detail into the concept
of dilution of well-known marks. The issue
in this case was the use of the mark BENZ
along with a “three pointed human being
in a ring” and the words “German
perfection. It need not be restricted to mere
machines. Or horizons,” in connection
with underwear made by an Indian
company.
 Daimler Benz Aktiegessellschaft,
Germany, the plaintiff, who owns the
famous three-pointed star BENZ logo
depicted above, sued the Indian underwear
company for passing off. The plaintiff’s
logo was registered in India in 1951.
The Mercedes Benz Case
 Ignoring the defense of honest concurrent
use by the defendant, the High Court of
Delhi granted the plaintiff’s injunction
and found that it would be a great
perversion of the law relating to
trademarks if a mark such as
MERCEDES BENZ with the three-
pointed star were humbled by
indiscriminate imitation by anyone
including persons like the defendant who
made undergarments.
 The Court held:
 Such a mark is not up for grabs—not
available to any person to apply upon
anything or goods. That name . . . is well
known in India and world wide, with
respect to cars, as is its symbol a three
pointed star
The Mercedes Benz Case
 It was further held by the Court that trademark law was
not intended to protect a person who would deliberately
derive the benefit of someone else’s reputation with
reference to goods, especially when such reputation
extended worldwide.
 The Court further went on to hold:
 In the instant case, “Benz” is a name given to a very high
priced and extremely well engineered product. In my
view, the defendant cannot dilute that by user [sic] of the
name “Benz” with respect to a product like under-wears.
The Mercedes Benz Case
 This judgment is still regarded as a milestone decision on
trademark dilution in India and its findings continue to be
cited in trademark disputes involving well-known marks.
 This is perhaps the first and only case in India enjoining a
defendant from using the plaintiff’s well-known mark on
the sole ground of free-riding, without analysis of
likelihood of confusion or deception.
 In fact, the High Court ruled out confusion and deception
by acknowledging the ubiquitous reputation of the name
BENZ in connection with cars.
ITC Ltd. v. Philip Morris Products SA & Ors
[2010 (42) PTC 572
 ITC Limited (ITC), one of the largest private-sector
companies in India, locked horns with Philip Morris
Products SA (Philip Morris) before the High Court of
Delhi over Philip Morris’s use of a roof design logo
containing the inverted letter “M.”
 The lawsuit was sparked by the alleged similarity
between the two logos and was based on ITC’s claim
that the M logo of Philip Morris had the effect of
blurring the distinctiveness of ITC’s WNamaste logo,
which ITC had been using for 34 years. Specifically,
ITC alleged that the use of the M logo by the
defendant breached Section 29(4) of the TM Act.
While plenty of evidence of use of its W-NAMASTE
logo in the hospitality and restaurant businesses was
made of record by ITC, there was no evidence of use
of this logo in connection with cigarettes. The
defendant primarily argued that while the W-
NAMASTE logo was registered for cigarettes in Class
34, there had been no use in connection with these
goods by the plaintiff. In fact, the defendant argued
that all of the plaintiff’s cigarettes were sold under
several other brand names without the use of the W-
NAMASTE logo.
ITC Ltd. v. Philip Morris Products SA & Ors
[2010 (42) PTC 572
 The defendant also pointed out
the relatively inconspicuous use
of this logo compared with use of
the house mark of the plaintiff
and other plaintiff’s registered
marks, as well as other evidence
filed by the plaintiff, arguing that
the only reason for the plaintiff’s
suit was to kill the defendant’s
competition because the
consumers who bought the
defendant’s cigarettes were rather
discerning as a result of the
market placement and price range
of its products
ITC Ltd. v. Philip Morris Products SA & Ors
[2010 (42) PTC 572
 After hearing lengthy arguments, the High Court of Delhi declined
the plaintiff’s request for preliminary injunction and noted that even
assuming that the plaintiff proved similarity of the two marks and
associated reputation, the record evidence showed that ITC’s W-
NAMASTE logo was associated mainly with the hospitality and
restaurant sector, and that such reputation could not possibly
transcend the hospitality business. There was nothing to suggest that
such association extended to mid- or high-priced cigarettes.
 The High Court considered this element to be crucial, because the
plaintiff did not deny selling cigarettes, although under different
brands without the logo in question.
 Therefore, it found no connection between the defendant’s mark and
the plaintiff’s services that could cause harm to the plaintiff or undue
advantage to the defendant.
The Court held:

 This Court is of opinion that the test here (for dilution) is not exactly the same.
For one, Parliament has consciously eschewed the “deceptively” similar standard
—which is defined by Section 2, in relation to infringement claims under Section
29(4).
 This would mean that the identity or similarity standard is a notch higher—the
claimant has to prove or establish that the two marks are identical with or similar
to each other.
 The question of deception does not arise here.
 There must be a near identification of the two marks or they must have the closest
similarity.
 The second aspect is that the other elements necessary to establish dilution—
dissimilarity of goods, the claimant mark having a reputation in India; the use of
the mark without due cause, resulting in detriment to it, or the defendant taking
undue advantage, have to be established.
 These ingredients are all to be established, as the conjunctive “and” is used, in
Section 29(4).
JUDGMENT
 The plaintiff appealed before the Division Bench of the
High Court of Delhi; however, it was not successful in
reversing the findings.
 While this holding correctly analyzes the requirements
under Section 29(4), it is interesting that the opinion was
written by the same Judge who issued the decision in the
Hamdard case discussed above.
 While in Hamdard the test for infringement in the case of
dissimilar goods was found to be “likelihood of
deception,” this decision steers clear of the requirement of
deception in such circumstances.
Christian Louboutin SAS v Abubaker & Others, 2018 SCC OnLine Del
9185 : (2018) 250 DLT 475.
 A Single Judge of the Hon’ble
Delhi High Court, vide order
dated May 25, 2019, summarily
dismissed a suit for trademark
infringement and passing off, at
the admission stage, on the
ground that no legal cause of
action was made out by the
plaintiff, as use of a single colour
does not qualify as a
mark/trademark under Section
2(m) and Section 2(zb) of the
Trademarks Act, 1999
(hereinafter referred to as “the
Act”).
Christian Louboutin SAS v Abubaker & Others, 2018 SCC OnLine
Del 9185 : (2018) 250 DLT 475.
 FACTS The plaintiff company, Christian
Louboutin SAS, pleaded that it was the owner
of the registered trademarks “RED SOLE”
under registration numbers 1922048, 2341890
and 2341891.
 The mark was a shade of the colour red
applied to the soles of ladies’ footwear
manufactured by the plaintiff.
 The suit was initiated by the plaintiff as the
defendants were using a shade of colour red on
the soles of their ladies’ footwear, thereby
allegedly infringing the registered trademarks
of the plaintiff and passing off their goods as
that of the plaintiff.
 The plaintiff also prayed for a decree against
the defendants and a grant of Rs.1,00,00,000/-
as damages for loss of sales, reputation and
goodwill of the plaintiff’s trademarks caused
by the unauthorized activities of the
defendants.
CONTENTIONS OF THE PLAINTIFF
 The plaintiff contended that it held exclusive ownership
over the registered trademarks “RED SOLE”, which is not
a word-mark, rather a shade of he color red applied to the
soles of ladies’ footwear manufactured by the plaintiff.
 It was further contended by the plaintiff that the defendant
No. 3 “M/S Veronica” was owned by defendant number 1
& 2, and they were carrying out their business from two
outlets located in Mumbai. Defendant number 1 & 2 were
using the “RED SOLE” manufactured by them without
the permission or authorization from the plaintiff
CONTENTIONS OF THE PLAINTIFF
 Thus, the defendants infringed the plaintiff’s registered rights, and were therefore liable to be
injuncted, and pay damages. When the matter was listed for admission and issue of summons to
the defendants, the Court was of the view that no legal cause of action was made out as per the
averments of the plaint.
 Hence, the plaint was liable to be rejected, and the court was not inclined to issue a notice to the
defendants.
 However, the plaintiff placed reliance on the judgment of the Division Bench in the case of
Bright Enterprise Pvt. Ltd. & Anr. v. MJ Bizcraft LLP & Anr., and pleaded that a commercial suit
cannot be dismissed at the preliminary stage by the court without issuing notice to the defendant.
In terms of Section 165 of the Commercial Courts, Commercial Division and Commercial
Appellate Division of High Courts Act, 2015 the CPC, 1908 has been amended in so far as it
applies to a commercial dispute of a specified value.
 Accordingly, Order XIII-A has been inserted.
 Order XIII-A deals with summary judgment. Rule 2 of the abovementioned act provides that an
applicant may apply for summary judgment at any time after service of summons on the
defendant but before issues are framed in the suit. Rule 4 of the same deals with the procedure
therefore and provides for giving at least 30 days’ notice to the respondent who has a right to file
a reply. Therefore, in view of the above, it was submitted that the suit cannot be dismissed at the
admission stage without issue of notice to the defendant.
The plaintiff further relied upon the
 judgment of the Appeals Court of USA in the case of Qualitex
Co. v. Jacobson Products Co., Inc., 6 pleading that a single
colour is recognized and awarded trademark status in USA and
the same is entitled to trademark protection in India.
 The plaintiff also placed reliance on the judgment in the case of
Deere & Company & Anr. v. Mr. Malkit Singh & Ors., for
showing that a single colour is entitled to protection as a
trademark and on the judgment of co-ordinate bench of the
Delhi High Court in the case of Christian Louboutin SAS v. Mr.
Pawan Kumar & Ors., wherein the Learned Single Judge had
passed a decree in favour of the plaintiff, by holding that the
plaintiff was entitled to exclusive ownership of the trademark of
red colour on the soles of its ladies’ footwear.
The plaintiff further relied upon
 Sections 31 and 32 of the Act to argue that distinctiveness can
be achieved by use of the trademark even if distinctiveness did
not exist at the time of registration, and if distinctiveness is
acquired for the trademark because of its use in relation to the
goods for which the trademark is registered, then such a
trademark cannot be declared as invalid.
 Further, the issue of distinctiveness is an issue that can be
tried, and the same can be decided only during the course of
trial in the suit. The plaintiff also claimed the RED SOLE to be
a device mark.
 The plaintiff also argued that under Section 10(2) of the Trade
Marks Act, a single colour would also qualify as a trademark
DECISION BY THE SINGLE JUDGE
 The Court observed that the judgment of Bright Enterprise Pvt.
Ltd. & Anr. v. MJ Bizcraft LLP & Anr was not applicable in the
present situation as the court in that case was dealing with Order
XIII-A11 of Civil Procedure Code and not Order XII Rule 6.12
Since there was no legal cause of action, the present suit lacked
merit and was not maintainable.
 Accordingly, under Order XII Rule 6 of CPC, the court has the
power to dismiss the suit, without even issuing summons in the suit.
Order XII Rule 6 deals with the power of the court to make an order
of give judgment having regard to admissions made in the pleadings
or otherwise, whether orally or in writing.
 It is pertinent to note that admission presupposes notice to the other
party, for without both parties, there cannot be admissions on fact.
DECISION BY THE SINGLE JUDGE
 Further, the court also noted that there was no legal cause
of action as there was no valid trademark. It was observed
that on a combined reading of Section 2(m) and Section
2(zb), a trademark means a mark including “combination
of colours”.
 Thus, “combination of colours” is a sine qua non, and
hence a single colour would not fall within the definition
of a mark and cannot be claimed as a trademark
The court distinguished the US judgment in
 Qualitex Co. v. Jacobson Products Co., Inc. stating that under the Trade Marks
Act of USA, there was no prohibition in using a single colour as a trademark, and
hence the said judgment was as per the laws of the US.
 In India, the legislature has mandated that a trademark must be a combination of
colours, and hence a single colour cannot be adopted as a trademark. Thus, the said
US judgment cannot be applied in the present case. The court further placed
reliance on N. Bhargavan Pillai (Dead) by Lrs. and Another v. State of Kerala,
and stated that if a judgment passed by a court did not consider the direct provision
of law, then the said judgment would have no binding effect. In light of the above-
mentioned judgment,
 the Court observed that the judgments delivered in the cases of Deere & Company
& Anr. v. Mr. Malkit Singh & Ors, and Christian Louboutin SAS v. Mr. Pawan
Kumar & Ors., did not have any binding effect since they did not deal with the
issue of using a single colour as a mark under the provisions of Trade Marks Act.
 Further, the Court held that in these judgments, the overriding provision of Section
30 (2)(a)17 was not discussed, and hence the same will not be binding.
 The court was, however, of the view that the plaintiff was
prima facie justified in raising arguments based on the
provisions of the Act, that even if there was an absolute
bar for registration of a trademark, if distinctiveness is
achieved by using a trademark which ought not to have
been registered as a trademark, then such a trademark on
achieving distinctiveness, will become a valid trademark,
and its registration cannot be cancelled.
 However, the court held that the said argument also does
not hold good as the sine qua non of the definition of mark
has to be complied with first
 The court further held that by simply applying a single colour to
the sole of a footwear it would not result in the single-coloured
sole as a device, as Section 10(2) has to be read in light of Section
10(1) which uses the expression “combination of colours”.
 The judgment is extensively based upon the mandate of the
supervening provision of Section 30 (2)(a) of the Act which
contains the limitations of the effect of a registered trademark and
held that a single colour applied to the goods would in normal
circumstances pertain to the characteristic of the goods which is a
feature of the product and hence a non-trademark function and
thus, cannot be prevented from being used by other sellers in the
market for their goods, even though the same is registered.
 Thus, in such circumstances, there would be no infringement
JUDGMENT
 Lastly, for passing off, it was held that no question of any
deception and confusion arose as the defendants were
selling their goods under word mark ‘VERONICA’ which
was completely different from the plaintiff’s word mark
‘CHRISTIAN LOUBOUTIN’.
 Accordingly, the suit was dismissed for want of legal
cause of action.
The Learned Single Judge had also relied on Section 30 (2)(a), for
dismissing the suit at the admission stage, which reads as follows:
 30 (2) A REGISTERED TRADE MARK IS NOT INFRINGED WHERE –
 (a) The use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods
or of rendering of services or other characteristics of goods or services; This
section postulates that the use of a registered trade mark in relation to goods,
inter-alia, to indicate the characteristics of the goods, is not an infringement.
This aspect has been dealt with in Para 19 of the judgment. The Learned Judge
had held that the characteristic(s) of the goods will include such functional
aspects of the goods which would give an appeal or look to the product/goods.
The Learned Judge went on to add that the red colour is applied for the purpose
of appeal or for the look of the goods and hence it is a function which is non-
trademark, and hence the use thereof by any other person would be covered
under the exception. This is also relatively virgin territory, unlike other sub-
sections of Section 30 where there exists body of case law. The Learned Judge
concluded, “Without any material on record, the colour is only for appeal or
looks.”
The Learned Judge had, therefore held that
 while by virtue of Proviso to Section 9 (1) and Section 32
the plaintiff can claim to be the owner of the trademark
having red colour applied to the soles of the shoes, but by
virtue of Section 30 (2)(a), other manufacturers/sellers are
not prohibited from using the colour red on their footwear
if the colour is serving a non-trademark function. The Ld.
 Judge also negated the argument of the plaintiff that a
single colour can be a trademark under section 10 (2) on
the ground it has to be read in the context of section 10 (1)
which uses the expression “combination of colours”, an
expression used in the definitions of both “mark” and
“trademark”.