Delhi High Court
In the matter of:-
CHRISTIAN LOUBOUTIN SAS & ANR ….Plaintiffs
Versus
M/S THE SHOE BOUTIQUE – SHUTIQ …..Defendant
Order Dated:- 22.08.2023
- The case of the Plaintiffs was 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 inintellectual 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 ‘REDSOLE’ 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’.
- GOODWILL :-The Plaintiffs shoes acquired enormous reputation and goodwill not only globally but also in India. Various Indian and international magazines have depicted the Plaintiffs’ shoes andadvertisements. A perusal of the same would show that the mark has been extensively used across the world.
- SALES FIGURES:-The sales figure of the Plaintiffs for 2022 in India are approximately Rs.22 crores. The Plaintiffs filed the present suit being aggrieved by the Defendant’s manufacture and sale of identical spike design shoes and footwear. The Defendants operate in various malls including Select City walk Mall, Saket from where the spike footwear has been picked up bythe Plaintiffs’ investigators.
- DEFENDANT:- The Defendant firm is a partnership firm of the Makkar family and that the Defendant is manufacturing identically designed shoes with the same get up. Purchases were made by the Plaintiffs both in Delhi, Hyderabad and other cities where the Defendant is located. A comparison of the shoes shows that the Defendant has identically copied the shoe designs.
- COMPARISON OF PRODUCTS:- Some of the shoes were produced before the Court, which shows that the shape and size of the spikes are also identical. As per the Plaintiffs by virtue of the unique and distinctive style and combination of factors such as extensive advertising, long and continuous use, the Plaintiffs have established goodwill in the said designs.
- WELL KNOWN MARK:- The ‘RED SOLE’ mark of the Plaintiffs was already been declared to be a well-known mark under Section 11(6) of the Trade Marks Act, 1999 by Delhi High Court in Christian Louboutin SAS v. Mr. Pawan Kumar [CS(COMM) 714/2016, order dated 12th December, 2017].
- It is the submission of ld. Counsel for plaintiff that the reputation that the Plaintiffs have garnered can also be evaluated on the basis of a chat GPT query.
- STATEMENT OF DEFENDANT :- Advance copy of the suit was served upon the Defendant and their counsel, ld. Counsel has entered appearance. In addition, one of the partners of the Defendant is also present in Court. Statement of one of the partners of defendant has been recorded to the effect that the shoe designs were used on a ‘made to order’ basis when the customer requested for the same. He further has given an undertaking on behalf of his firm and his family members that the Defendant would not in future imitate or copy, manufacture or sell any shoes which are imitative of the Plaintiffs’ designs which are subject matter of the present suit. The statement having been recorded today, the Defendant has clearly given an undertaking that it does not intend to use the Plaintiffs’ designs.
- QUESTIONS FROM CHAT GPT:- This is however not to say that the Court recognises a monopoly in favour of the Plaintiff for all Spiked shoes or coloured soles. The impugned products ought to be a colourable or a slavish imitation of the Plaintiff’s getup and designs for an injunction to be granted. In fact when two different questions are put on CHAT GPT:- a) Is there any brand known for manufacturing & selling shoes with spikes and studs on the outer body? b) Give a list of brands that make shoes with spikes and studs on the outer body of the shoe?
- Hon’ble Court response to Chat GPT :- The responses from ChatGPT as also the one relied upon by the Plaintiffs shows that the said tool cannot be the basis of adjudication of legal or factual issues in a court of law. The response of a Large Language Model (LLM) based chatbots such as ChatGPT, which is sought to be relied upon by ld. Counsel for the Plaintiff, depends upon a host of factors including the nature and structure of query put by the user, the training data etc. Further,there are possibilities of incorrect responses, fictional case laws, imaginative data etc. generated by AI chatbots. Accuracy and reliability of AI generated data is still in the grey area. There is no doubt in the mind of the Court that at the present stage of technological development, AI cannot substitute either the human intelligence or the humane element in the adjudicatory process. At best the tool could be utilised for a preliminary understanding or for preliminary research and nothing more.
- DECISION OF THE COURT :-Upon perusing the shoes of the parties and the comparative chart of a large variety of product designs which have been imitated by the Defendant that this Court arrives at the conclusion that there has been a clear intention to imitate and gain monetarily on the strength of the reputation and goodwill of the Plaintiffs. This Court has no doubt that the products of the Defendant are knock-offs or look-alikes of the Plaintiffs’ distinctive shoes and footwear. The Defendant has copied all the essential features of the Plaintiff’s footwear such as ‘RED SOLE’, ‘SPIKED SHOE STYLE’, as also the prints. The imitation is not of one or two designs but of a large number of designs as the chart above indicates. The acts of the Defendant are nothing more but an attempt to pass off its own goods as the goods of the Plaintiffs.
- FINAL CONDITONS IMPOSED ON DEFENDANT:- Insofar as the prayer for damages is concerned, since the Defendant has agreed to give an undertaking on the very first day when the suit has been listed before this Court, it is directed that the Defendant shall abide by the undertaking that it shall not copy or imitate any of the designs of the Plaintiffs’ shoes. If any breach of this undertaking is found, the Defendant would be liable to pay a lump sum amount of Rs.25 lakhs as damages to the Plaintiffs immediately upon such evidence coming to notice of the Plaintiffs.
- PENALTY IMPOSED ON DEFENDANT :-In addition, considering the fact that the Defendant is also using the pictures of well-known Bollywood celebrities on its Instagram account, etc., and also has displayed/ sold the shoes in high end malls, it is directed that the Defendant shall pay a sum of Rs.2 lakhs as costs to the Plaintiffs within four weeks.
- DECREE :-The suit is decreed in the above terms. Decree sheet be drawn up after payment of the court fees. No further orders as to costs.
- RETURN OF COURT FEE:- The Plaintiffs are also given a refund of 50% of Court fees.
Date:-04.09.2023
Place:- Delhi
Read, Reviewed & Edited by
NEERAJ GOGIA, ADVOCATE
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