THE RED SOLE SAGA- SINGLE COLOUR TRADEMARKS IN INDIA

-Aayushmaan Gauba

Partner, Intellectual Property and Dispute Resolution

Christian Loboutin may have won before the European Court of Justice (ECJ), but its fate in India is still doubtful. In this article, I’m analysing the entire gamut of judgments in Indian Courts where Christian Louboutin attempted to protect its Red Color Show Sole in India.

The Hon’ble Delhi High Court has recently delivered two conflicting judgments in three cases[1]involving the same Plaintiff,Christian Louboutin SAS (hereinafter the “Plaintiff” for the sake of uniformity). The Plaintiff herein had in all three cases before the Delhi High Court sought to protect its alleged trademark rights in a single colour ‘red sole’ being the essential feature of the footwear manufactured by the Plaintiff. It is pertinent to mention that the Plaintiff had asserted rights in each of the aforesaid cases only on the single red colour being (Pantone no. 18.1663TP) and not on any conventional trademarks proprietary to the Plaintiff.

While the aforesaid suits were placed in front of three coordinate benches of the Delhi High Court, two coordinate benches decreed the suit of the Plaintiff being uncontested by the defendants therein, in its favour albeit holding the ‘red sole trademark’ a ‘well-known mark’.

Per contra another bench comprising of Justice Valmiki Mehta dismissed the suit of the Plaintiff, primarily on the ground that single colour trademarks are incapable of trademark protection in India.  The Hon’ble Delhi High Court through Justice Valmiki Mehta, analysed the definition of Mark under Section 2 (m) of the Trade Marks Act, 1999 (hereinafter referred to as the “Act”) and the definition of trademark under 2(zb) of the Act.

The Court has in Para 8 of the said Judgment observed that:

When we read the definition of “mark” it is crystal clear that the legislature has categorically used the expression “combination of colours” with or without its combination with the other ingredients of the definition of “mark” being a device, brand, heading, label, ticket, name, signatures, word, letter, numeral, shape of goods and packaging. Combination of colours is sine qua non, and meaning thereby that quite obviously one single colour, as contra-distinguished from combination of colours, cannot be a mark falling in the definition of “mark”.

Hence, a single colour not being a mark, the single colour cannot be claimed as a trademark. Once the legislature has intentionally and deliberately used the expression combination of colours, and it has not used the word colour in singular, it is clear that a single colour cannot be a mark for being elevated to the status of a trademark. In the present case, there is no dispute that we are only dealing with a single colour viz the red colour shade which the plaintiff is using in the soles of its goods being ladies footwear. I therefore hold that by the very language of the definition of mark contained in the Trade Marks Act, a single colour cannot under any circumstances be given the benefit for being used as an exclusively owned trademark of a manufacturer/seller etc. 

The Court further rejected the Plaintiff’s contention regarding the interplay of Section 9 (1) read with Section 31 and 32 of the Act, wherein the Court held that even though there is an absolute bar for registration of trademark, yet if distinctiveness is achieved by using of such a trademark which ought not to have been registered as a trademark, then such a trademark on achieving distinctiveness because of user, will become a valid trademark, and its registration cannot be cancelled.

However, the main ground on which the Court rejected this contention was that the said argument ignores the first basic sine qua non of a thing becoming a trademark i.e of whatever is sought to be claimed as a trademark must first also be a mark.

The benefit of Proviso to Section 9(1) of the Act read with Section 32 of the Act would be available to the Plaintiff only if first of all the red colour which the Plaintiff claims to be the exclusive owner is at all capable of being a mark and hence a trademark because it is a trademark which is the subject matter of Sections 9(1)(a) and 9(1)(b) and Proviso to Section 9(1) of the Act.

It has already been discussed above that unless there are combinations of colours i.e more than one colour is sought to be used as a trademark, it cannot be held that a single colour is a mark, and since a single colour cannot be a mark it therefore cannot be a trademark under the Act.  Once a single colour cannot be a mark and therefore cannot be a trademark, the issue of a plaintiff claiming use of a single colour as a trademark by getting benefit under the Proviso to Section 9(1) of the Act read with Section 32 of the Act will not arise, because these provisions will only come into play if there is first of all a trademark because of a mark being used in the course of a trade as a trademark.

Another reason that the court dismissed the suit of the Plaintiff was on the basis of Section 30 2(a) of the Act, which provides exceptions to the rights which a registered owner of a trademark claims. Section 30 of the Act provides that although a plaintiff may be an owner of a particular trademark, yet if the registered trademark of the plaintiff is used by any other person, whose use of the registered trademark is as per the entitlements of the different sub-sections of Section 30 of the Act, then such use cannot be prevented by the registered owner of the trademark.

The Court held that a single colour which is applied to the goods which are sold would in normal and ordinary circumstances pertain to the characteristic or characteristics of the goods.

Colour is applied to certain goods for the purpose of the appeal of the goods or for the looks of the products/goods. Such application of colour is a function being performed for the goods to give an appeal to the goods. The characteristic performs a non-trademark function as a feature of the product, and therefore a feature of a product cannot be prevented from being used by the other manufacturers and sellers in the market for their goods, even though the feature or characteristic or characteristics or a functional aspect is got registered by a manufacturer or seller as his trademark for his product/goods.

Lastly the Court rejected the suit of the Plaintiff for the tort of passing-off on account of 3 major reasons a) a single colour cannot become a trademark, b) the issue of passing off would arise only if there was disentitlement of the defendants to use the said single colour and c) that the trademarks (word-mark) of the plaintiff and defendant were not similar.

Thus protection and enforcement of single colour marks have always been difficult to enforce in India owing to a direct bar thereto in the Act.

Also another reason that courts in India are reluctant to enforce single colours marks owing to the colour depletion theory wherein the Courts lean in favour of colours being limited need to be available in the industry for use by all and when more so a single colour in fact serves a function other than a trademark, then there exists special reasons which militates against use of colour alone as a trademark for being exclusively owned by a person who adopts the colour as his trademark.

It is often said that a picture conveys more than a thousand words. In the world of brands, the same can be said of colours. But when it comes to registering and protecting colours as trade marks, and so monopolising their use in relation to particular products or services, there are many legal and technical obstacles in the way. I conclude by saying whosoever adopts a single colour mark does so at its own peril being a weak mark at the least being incapable of being protected and enforced in India.