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June 2018

Infringement or passing off in use of single colour as trademark

by Manoj Gupta Prince Bharti

A Single Judge of the Hon’ble Delhi High Court, vide its order dated May 25, 2018 summarily dismissed a suit for trademark infringement and passing off on the ground that no legal cause of action is made out by the Plaintiff as the registered trademark does not qualify to be a trademark under the Trademarks Act1999 (hereinafter referred to as “the Act”). The registered trademark, “RED SOLE” in the instant suit, was not a wordmark, but a red colour shade applied to the soles of the ladies’ footwear manufactured by the Plaintiff.

It was held by the Hon’ble Court that use of a single colour as against a combination of colours does not qualify as a ‘mark’ under Section 2 (1) (m) and as a ‘trademark’ under Section 2(1) (zb) of the Act. Another important observation of the Court was that when a registered trademark is being used as a characteristic or characteristics of a good, i.e. it is serving a non-trademark function, then the use of the same by another person as characteristic or characteristics of his goods cannot be termed as infringement.

Interestingly, the Plaintiff in the abovementioned dispute is also engaged in similar legal battles in various courts across the globe. This article, while discussing the instant case law also touches upon the larger question of use of single colour as trademark.

 

Decision of the Delhi High Court:

The Plaintiff, Christian Louboutin SAS claimed exclusive ownership of its registered trademark ‘RED SOLE’, which was actually not a wordmark but a red colour shade applied to the shoes of ladies’ footwear manufactured by them. The Plaintiff pleaded that Defendants are using red colour in the soles of their ladies’ footwear, thereby, infringing the registered trademark of the Plaintiff and passing off their goods as that of the Plaintiff’s.

 

In this regard, the Court observed that, from a combined reading of Section 2(m) and Section 2(zb) of the Act, it is clear that the intent of the legislature was to permit a mark having “combination of colours” as a trademark and a single colour cannot be provided the status of a trademark. Further, Plaintiff’s reliance on a judgement of US Court of Appeal [see Endnote 1] was rejected as the Hon’ble Court held that there was no prohibition of using single colour as a trademark in US. However, the same is not applicable in India, as the legislature in India mandates that a trademark has to be definitely of more than one colour viz. a combination of colours.

The Single Judge also distinguished two earlier decisions delivered by co-ordinate Benches of the same Court, in Deere & Company & Anr. v. Mr. Malkit Singh & Ors[see Endnote 2] (useof green colour on agricultural/farm machinery) and Christian Louboutin Sas v. Mr. Pawan Kumar & Ors. [see Endnote 3] use of red colour on the soles of ladies’ footwear). The Court was of the view that the aforesaid judgements did not deal with the issue of using single colour as a mark under the provisions of Act and also did not consider the overriding provision of Section 30(2)(a) of the Act and hence were not binding in nature. The Hon’ble Court, placed reliance on the Supreme Court’s observations in N. Bhargavan Pillai (Dead) by Lrs. & Anr. v. State of Kerala[see Endnote 4] wherein it was held that if a judgment fails to consider a direct provision of law, it would not have a binding effect.

The Plaintiff further argued that bar of single colour being used as a trademark under Section 9(1)(a) and Section 9(1) (b) is not absolute because of proviso to Section 9(1) read with Section 31 and Section 32, which provide that distinctiveness can be achieved by means of use of the trademark, even though distinctiveness did not exist at the time of registration. The Hon’ble Court, however, held that the benefit of said provisions will not be available in the present case, as the “RED SOLE” does not even qualify to be a ‘mark’ and consequently not a ‘trademark’ under Act.

The Hon’ble Court further rejected the contention of the Plaintiff that registration of red sole is in the form of a device trademark and that a device is capable of being a mark, and held that by simply applying a single colour to the sole of a footwear will not result in making the single coloured sole a device.

Similarly, reliance placed on Section 10(2) by the Plaintiff to argue that the Act permits a single colour for being a trademark was rejected holding that Section 10(2) is to be read in the context of Section 10(1), which is actually used for combination of colours and that the subject matter in both the sub-sections of Section 10 is same and not different.

The Court’s final findings were extensively based upon mandate of supervening provision of Section 30(2)(a) of the Act which contains the limitations of a registered trademark and held that a single colour applied to the goods would in normal circumstances pertain to the characteristic of the goods which is a feature of the product and hence a non-trademark function and hence, cannot be prevented from being used by other sellers in the market for their goods, even though the same is registered. Thus, in such circumstances, there would be no infringement.

Finally, for passing off, it was held that no question of any deception and confusion arose as the Defendants were selling their goods under wordmark ‘VERONICA’ which was completely different from the Plaintiff’s wordmark ‘CHRISTIAN LOUBOUTIN’.

In light of the aforesaid, the Single Judge found that suit was not maintainable as there was no legal cause of action. Consequently, by applying Order XII Rule 6 of CPC the Court dismissed the suit even without issuing summons.

 

RED SOLE held POSITION MARK in CJEU:

In a similar dispute involving the same Plaintiff in European Union, the Court of Justice of the European Union on June 12, 2018 held that the “RED SOLE” is a position mark and consequently, a valid trademark under the laws of European Union. This was contrary to the previous opinion provided by the Advocate General in Court of Justice of the European Union on February 06, 2018, wherein he had expressed doubts as to whether use of colour red can perform the essential function of a trademark (identifying its proprietor), when that colour is used out of context, i.e., separately from the shape of a sole.

The Advocate General in his earlier opinion was of the view that the trademark at issue has to be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se and hence not a valid trademark in the European Union. He had also opined that it has to be assessed as to whether the registration of trademark would not run counter to the general interest in not duly restricting the availability of the characteristics represented by that trademark for other operators offering for sale goods or services of the same type.

 

Decision of United States Court of Appeals:

The Court of Appeals of United States, in a dispute involving same Plaintiff and the same trademark[see Endnote 5] (red sole),has concluded that Louboutin’s trademark, which covers the red, lacquered outsole of a woman’s high fashion shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. Overruling the District Court's Order which had held that a single colour can never serve as a trademark in the fashion industry, the Court limited the “RED SOLE” trademark to only those situations in which the red lacquered outsole contrasts in colour with the remainder of the shoe.

The Court however refrained from addressing the question as to whether Yves Saint Laurent’s (defendant before the US Court) use of a red outsole risks consumer confusion or whether the Louboutin mark, as modified, is “functional”.

 

Conclusion:

While, consumers all over the world are becoming more brand conscious, creative designers around the world are busy exploiting their grey matter to imagine various fonts, type-settings, word marks or colour combinations, in order to gain a distinct edge over the brand competitors. Brand owners also leave no stone unturned in order to gain maximum protection to their brand or any other mark corresponding to their identity. However, it seems the legal fraternity is still dealing with the dilemma whether use of a single colour can qualify as a trademark.

It may also be noted that a Single Judge of the Delhi High Court in December 2017 had held that plaintiff’s ‘RED SOLE’ trademark has acquired a well-known character as it is a well-known luxury brand with presence in over 60 countries, using its ‘RED SOLE’ trademarks extensively and continuously since 1992. In the light of the contrasting rulings, it seems that questions of distinctiveness due to continuous global use and exclusivity of use of a single colour, may need to be scrutinised minutely. The present order of the Single Judge is the start of the great journey till the issue is settled by the Division bench (if appealed) and later by the Supreme Court of India.

[The authors are Assistant Manager and Senior Manager, respectively, in Knowledge Management Team, Lakshmikumaran & Sridharan, New Delhi]

 

End Notes:


1. Qualitex Co. v. Jacobson Products Co., Inc. - Case No. 93-1577, decided on 28-3-1995
2.CS(COMM) 738/2018 decided on 23-4-2018
3.CS(COMM) 714/2016 decided on 12-12-2017
4. (2004) 13 SCC 217
5. Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. – Decision dated 5-9-2012 in Docket No. 11–3303–cv.

 

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