This case highlights an important legal principle concerning judicial discipline and the necessity for consistency in judicial rulings. 

The Division Bench of the Delhi High Court, while adjudicating upon a trademark infringement dispute, emphasized that a court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement. 

The case arose when a Single Judge dismissed a trademark infringement suit at the initial stage without issuing summons, despite prior co-ordinate bench rulings that recognized the validity of the plaintiff's trademark. The appellate court set aside the order, reaffirming that judicial consistency must be maintained, and any deviation from settled law requires reference to a larger bench.

Factual Background:
Christian Louboutin SAS, a French company, owns the "RED SOLE" trademark, which is internationally recognized. The plaintiff's trademark is registered under Class 25, covering shoes (except orthopedic footwear), with the limitation that it applies to the specific shade of red (Pantone No. 18.1663TP) on the outsole of the shoe. The plaintiff conducted a market survey in April 2018 and discovered that the defendants were selling ladies' shoes with a similar red sole, thereby infringing upon its trademark. A private investigator's report indicated that the defendants were engaged in counterfeiting activities. The plaintiff argued that its trademark had trans-border reputation and was widely known in India even before its formal launch in the country.

Procedural Background:
The plaintiff filed a commercial suit (CS (COMM) No. 890 of 2018) seeking a permanent injunction against the defendants for trademark infringement, passing off, unfair competition, dilution, and tarnishment. The plaintiff also filed an interim injunction application under Order XXXIX Rules 1 and 2 CPC to restrain the defendants from manufacturing and selling footwear bearing the "RED SOLE" trademark. A separate application was filed for appointing a Local Commissioner to visit the defendants' premises and seize the infringing goods. The Single Judge, after hearing the plaintiff, reserved orders and subsequently dismissed the suit on May 25, 2018, without issuing summons to the defendants.

Issues Involved in the Case:
Whether a commercial suit seeking a permanent injunction against trademark infringement can be dismissed at the first hearing under Order XII Rule 6 CPC. Whether the learned Single Judge was justified in holding that a single color cannot be registered as a trademark. Whether the learned Single Judge was correct in disagreeing with prior co-ordinate bench judgments without referring the matter to a larger bench.

Submission of Parties:
The plaintiff, Christian Louboutin SAS, argued that the "RED SOLE" trademark is a registered device mark with distinctive character and acquired reputation. The defendants' sale of red-soled shoes constitutes infringement, passing off, and unfair competition. The Single Judge erred in dismissing the suit without issuing summons, violating principles of natural justice. The earlier judgments in Deere & Company v. Malkit Singh and Christian Louboutin SAS v. Pawan Kumar upheld the protection of single-color trademarks.

The defendants, Abubaker & Ors., contended that a single color cannot be registered as a trademark under the Trade Marks Act, 1999. Section 30(2)(a) of the Act allows the use of a registered trademark in a descriptive manner. The plaintiff cannot claim exclusivity over the red color in footwear. The dismissal of the suit was justified since no valid cause of action was made out.

Discussion on Judgments and Citations:
The Single Judge dismissed the suit relying on Section 2(m) and 2(zb) of the Trade Marks Act, holding that a single color does not qualify as a trademark. The judgment of the Single Judge was inconsistent with Deere & Company v. Malkit Singh (April 23, 2018), which upheld single color trademark protection, and Christian Louboutin SAS v. Pawan Kumar (December 12, 2017), which recognized "RED SOLE" as a well-known trademark. The Single Judge referred to Padma Sundara Rao v. State of Tamil Nadu (2002) 3 SCC 533 and N. Bhargavan Pillai v. State of Kerala (2004) 13 SCC 217 but failed to consider the legal presumption in favor of registered trademarks. The Division Bench held that the learned Single Judge should have referred the matter to a larger bench instead of disregarding binding precedent.

Reasoning and Analysis of the Judge:
A commercial suit for trademark infringement cannot be dismissed under Order XII Rule 6 CPC at the first hearing without the defendants entering appearance. The plaintiff's registered trademark enjoys a presumption of validity under Section 31 of the Trade Marks Act, 1999. Section 30(2)(a) provides a defense to infringement, but it must be raised by the defendants and cannot be used by the court suo moto. The earlier judgments in favor of single-color trademarks should have been followed or referred to a larger bench for reconsideration. Dismissing a suit without issuing summons was improper and contrary to the principles of natural justice. A court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement.

The Division Bench specifically emphasized that the doctrine of stare decisis requires lower and co-ordinate benches to adhere to settled legal principles unless referred to a larger bench. The court cited Mahadeolal Kanodia v. Administrator General of West Bengal AIR 1960 SC 936, which mandates that where a Single Judge or Division Bench finds prior rulings incorrect, it must refer the matter to a larger bench rather than overriding established precedents. 

In this case, the Single Judge failed to follow the legal precedents laid down in earlier judgments, leading to a miscarriage of justice and necessitating intervention by the appellate court.

Final Decision:
The Division Bench set aside the order of the Single Judge. The suit (CS (COMM) No. 890 of 2018) was restored for reconsideration. The case was remanded to the learned Single Judge for adjudication after issuing summons to the defendants. The court clarified that it had not expressed any opinion on the merits of the case and directed the matter to be heard afresh.

Law Settled in the Case:
A commercial suit for trademark infringement cannot be dismissed under Order XII Rule 6 CPC at the first hearing without the defendants entering appearance. The presumption of validity of a registered trademark under Section 31 of the Trade Marks Act must be given due consideration. 

A court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement. Section 30(2)(a) of the Trade Marks Act is a defense that must be raised by the defendants, not invoked suo moto by the court. 

Dismissing a suit without issuing summons violates principles of natural justice and is contrary to procedural law.

Case Title: Adyar Gate Hotels Limited Vs. ITC Limited & Anr.
Date of Order: February 24, 2025
Case Number: FAO(OS) (COMM) 32/2025
Neutral Citation: 2025:DHC:1277:DB
Name of Court: High Court of Delhi at New Delhi
Name of Judges: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539