Recently, two different judges of the Delhi High Court while being asked to consider prayer for declaration of a mark as well known took completely different stand. The marks involved were:

SAMSUNG and its oval shape device 

Christian Louboutin’s ‘RED SOLE’ for shoes 

The proprietors of above-mentioned trademarks sought relief to declare their trademarks as well-known as part of trademark infringement, copyright infringement and passing off action instituted by them against third parties that had infringed their rights.

The judge hearing Samsung case refused to declare the mark to be well known holding that the proper procedure and forum for such relief was filing of an application under the Rule 124 of the new Trade Marks Rules, 2017 that has laid out criteria for determining a mark to be well-known. On the other hand the judge hearing Christian Louboutin’s ‘RED SOLE’ shoes declared it to be well known as part of its judgement. Interestingly both cases were decided ex parte.

In Samsung case the judge remarked “since the defendants have not contested the suit by leading evidence, ‘Samsung’ cannot circumvent the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 with respect to determination of a trade mark as a well-known mark. Had the Defendants formally contested Samsung’s contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of ‘Samsung’ claim that the mark SAMSUNG is well-known”

In Christian Louboutin’s ‘RED SOLE’ case, the court noted the following evidence lead by the Plaintiff (Louboutin) in support of its case to draw the conclusion that RED SOLE mark has acquired a well known character.

1. 1. Louboutin is well-known luxury brand with presence in over 60 countries including India;
   2. Louboutin has been using its ‘RED SOLE’ trade marks extensively and continuously since 1992;
   3. Louboutin’s ‘RED SOLE’ trademarks are known to customers throughout India;
   4. Louboutin is recognised as a sole licensor of the Christian Louboutin trademarks and has successfully enforced its rights in the said trademarks;
   5. Louboutin has extensively promoted its luxury products under its Christian Louboutin trademarks including the ‘RED SOLE‘ trademark in India;
   6. Louboutin has extensive presence over the Internet;
   7. Louboutin�s website is accessible to consumers in India and have served in making customers in India aware of Louboutin’svarious luxury products including the ‘RED SOLE‘ trademark;
   8. Louboutin has received various awards and accolades for the luxury products made available under the Louboutin’s well-known trademark including the ‘RED SOLE‘ trademark.

Our comment

Rule 124 of Trademarks Rules, provides for filing of an application to seek well known status of a mark, came into effect in March 2017. Prior to March 2017 there was no procedure in place to record well known marks. Thus the courts have been considering the request and ruling on plea to declare a mark to be well known. In fact the well known marks list compiled by the Trademark Registry has most of the entries based on court ruling. The author is of the view that Rule 124 in question being procedural in nature does not curtail the power of court to determine whether a mark qualifies to be a ‘well known’ mark. However, it seems the judge in Samsung case did not want to go into the quality of evidence lead by the Plaintiff more so when the evidence was recorded ex parte and not contested by the Defendant. It will be interesting to see going forward which of the two judgements will gain acceptability with the courts.