The debate over single colour trademark protection saw some interesting developments this year. The Christian Louboutin brand, famous for its red-sole shoes, enjoys trademark protection for various marks under classes 3, 14, 18 and 25. It appears to have a strong ground for enforcement against infringement and passing off.
However, even after three major cases in Delhi High Court, the status of the famous red sole trademark remains undecided.
Delhi High Court had issued two injunctions to uphold the red sole trademark, except in Louboutin v Abubaker, which was dismissed. An appeal in this colour trademark protection case is still pending, the decision on which might decide the fate of the case.
In Louboutin v Pawan Kumar, on 27 September 2017, the court declared the red sole as a well-known trademark. It acknowledged that Louboutin has been using the red sole mark since 1992 and that is recognized across the world.
In Louboutin v Abubaker, on 25 May 2018, the court looked into the definition of “mark” and held that the legislature categorically used the expression “combination of colours”. In this case, however, there is only one colour, red.
The court rejected the plaintiff’s reliance on Louboutin v Pawan Kumar stating that the case had not considered section 2(m) of the Trade Marks Act, 1999 (act). The court held that even if the red sole acquired distinctiveness, it cannot be considered as a valid trademark because it does not fall under the definition of mark. Relying on section 30(2)(a), the court held that if the trademark is also characteristic of the goods then another person cannot be stopped from manufacturing or selling the same characteristic. A single colour is the only characteristic of the goods and therefore falls under section 30. Thus, even if Louboutin is the owner of the trademark, other persons are not prohibited from using the mark as per section 30(2)(a).
In Louboutin v Ashish Bansal, on 31 July 2018, it was held that a specific tone of red is applied to the outsole of the shoe, which is unique and is associated only with Louboutin. The court accredited Louboutin’s registered mark in India.
Apart from the judicial decisions, the provisions in the act are also open-ended, contributing further to the dilemma. Section 2(m) says a mark includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination in it”. It has yet to be decided if the definition of “in it”, as mentioned section 2(m), is inclusive or exhaustive. Section (15)(1) says that where the proprietor of a trademark claims to be entitled to the exclusive use of any part “in it” separately, they may apply to register the whole and the part as separate trademarks.
Although a combination of colours enjoys statutory protection in the act, protection of a single colour is not mentioned. Few single colours have been previously granted registrations based on the inherent distinctiveness of the colours.
Section 10(1) says a trademark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the tribunal having to decide on its distinctive character. The distinctiveness of the colour is an essential element that is not useful in regular cases, where a monopoly over a single colour cannot be allowed. Therefore, it is difficult to establish protection in this category.
According to the Trademark Manual, single colour trademarks can be registered, if it is very unusual and peculiar in a trade and is recognized by the traders and consumers alike in that it serves as a badge of origin for that class of goods.
As colours are not normally used by traders as a means of brand identification, unlike words or pictures, consumers are not in the habit of making assumptions about the origin of goods and services based solely on their colour or packaging colour. It, therefore, follows that single colours will only be capable of denoting the origin of a product or service in exceptional circumstances. In accordance with the manual, marks consisting of a single colour will usually be liable to objection under section 9(1)(a) as they inherently lack capacity to be distinguished. Where the exclusive right to colour is sought, weighty evidence should be necessary to overcome the objection.
Delhi High Court has granted permanent injunction and punitive damages for the loss of goodwill and reputation in two cases of colour trademark protection while dismissing the suit in another case. It will be interesting to see how the appeal of the previous case goes and whether we get definite judicial reasoning for single colour trademark protection.
Harshada Wadkar is a senior associate at LexOrbis.
146 Jolly Maker Chamber II,
Vinay K Shah Marg, Nariman Point,
Mumbai – 400021, India
New Delhi | Bengaluru