While Christian Louboutin had a favourable decision from European Court of Justice (ECJ), in similar circumstances, the High Court of Delhi dismissed its claim of exclusivity in the red colour for shoe sole on the ground that a single colour cannot be granted protection as a trademark.  The ruling came in the context of a suit for trademark infringement and passing off filed by Christian Louboutin against a Mumbai based party, namely Abubaker & Ors., who were selling ladies footwear with the similar red soles. Interestingly, decision was in contrast to an earlier finding by a judge of the Delhi High Court holding ‘red sole’ of Christian Louboutin to be a well known mark.

Christian Louboutin presented their arguments along the following lines:

• That they are the registered proprietor of the trademark RED SOLE bearing nos. 1922048 (Class 25), 2341890 (Class 3) and 2341891 (Class 14). It is not a wordmark but a red colour shade applied to the soles of the ladies footwear manufactured by them.
• That despite the bar (contained in Section 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 (“the Act”) for registration of a single colour as a trademark, it is not absolute considering proviso to Section 9(1) specifies that the registration will not be refused if the trademark has achieved distinctiveness as a result of use made of it.
• That Section 31 of the Act provides that distinctiveness can be achieved by means of use of the trademark although distinctiveness did not exist at the time of registration.
• That Section 32 of the Act ought to be held to be determinative of matter which provides that even if there is an absolute bar for registration of a single colour as a trademark on account of Sections 9(1)(a) and 9(1)(b) of the Act, however, the trademark has acquired distinctiveness because of its use in relation to the goods for which it is registered, then such a trademark cannot be declared invalid.
• That their registration of red sole is for a ‘device’ trademark. A device is capable of being a ‘mark’ and therefore a ‘trademark’.
• Christian Louboutin placed reliance upon the judgment of the Appeals Court of USA in the case of Qualitex Co. Vs. Jacobson Products Co., Inc., case no. 93-1577 and the Single Judge decisions of the Delhi High Court in the cases of Deere & Company & Anr. Vs. Mr. Malkit Singh & Ors., CS(COMM) 738/2018 and Christian Louboutin Sas Vs. Mr. Pawan Kumar Ors., CS(COMM) 714/2016 to argue that a single colour is protectable and recognised for being granted the status of a trademark.

The court, after hearing Christian Louboutin’s submissions, dismissed the suit making the following observations:

• the definition of a ‘mark’ under the Indian Trademark Act {Section 2(m)} has categorically used the expression ‘combination of colours’. Thus a single colour does not qualify as a mark. The judge opined a ‘mark’ must meet the criteria as defined under Section 2(m) to be protected 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.
• The argument that mark deserves to be protected since it has acquired distinctiveness on account of use was rejected on the basis that it would be available only if the red colour which the Plaintiff claims to be the exclusive owner is at all capable of being a ‘mark’ and hence a ‘trademark’.
• The Plaintiff’s argument that their registration of red sole is for a ‘device’ trademark was rejected on the basis that the expression ‘device’ will have to be interpreted and read having independent existence by itself. If what is sought to be included in the meaning of device will result in making it a part of the product, and which is an inseparable part of the product itself, as a device, then such an endeavour of a manufacturer or seller should be held as being impermissible. The court held “for the device to be a trademark, such a device must have standalone independent existence in itself so as to have an identity of its own even without being part of the product/goods”.
• The colour red applied by the Defendants to the soles of their footwear, adds to the appeal or the looks of the products, and therefore such a feature which is not used as a trademark will not entitle the Plaintiff to seek injunction against use of such feature of the products by the Defendants simply because the Plaintiff is the owner of the trademark red colour shade applied to the soles of the ladies footwear being sold by them.
• The court also rejected the Plaintiff’s claim of passing off on the ground that a) a single colour cannot become a trademark, b) the red colour on shoe soles 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. Therefore Defendants are entitled in view of Section 30(2)(a) of the Act to use red colour in the soles of their footwear, even if the plaintiff is held to be the owner of their trademark, and c) the Defendants are also using a word mark VERONICA on their products which is completely different from the Plaintiff’s word mark CHRISTIAN LOUBOUTIN. Thus there does not arise any question of deception or confusion.
• That the judgment in the case of Qualitex Co. was given under the Trade Marks Act of USA where there is no prohibition of one colour being adopted as a trademark. Further, the two judgments relied upon by the Plaintiff on protection of single colour would also not be binding since these cases do not consider the provision of Section 2(m) of the Act as well as discuss the overriding provision of Section 30(2)(a) of the Act.

The court in view of the above findings concluded that even if the contents of the plaint are taken as completely correct, Plaintiff will not be entitled to the reliefs urging infringement of their trademark, passing off, etc. since 1) the suit does not contain any legal cause of action. The use of a single colour does not qualify to be a trademark in view of provisions of Sections 2(m) and 2(zb) of the Act.

Our comments

The Act does not expressly provide for protection of single colour trademarks. However, the practice guidelines drafted by the Trade Mark Office (which are presently under consideration) suggest that a single colour may be registrable as a trademark on providing strict evidence of acquired distinctiveness in India, prior to the date of filing of the single colour trademark. Since there are almost no precedent discussing protection granted to single colour this is one of a kind decision. It will be interesting to see if Christian Louboutin would appeal the decision with the ECJ ruling in their favour.