Well-known red sole, not even a trademark?

By Omesh Puri and Dheeraj Kapoor, LexOrbis

Delhi High Court recently held that a single colour is incapable of being a trademark since it is not even a “mark” as defined in the Trade Marks Act, 1999. In a judgment on 25 May, the court observed that in order to become a “trademark”, the matter in question would first have to be a “mark”. When a mark is used in the course of trade and identifies the source of goods as originating from a particular manufacturer or seller then that mark becomes a trademark. The definition of “mark” under section 2(m) of the act “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. As with regard to colour this definition contains only “combination of colours”, the court held that a single colour, not being envisaged in the definition of “mark”, is also incapable of being elevated to the status of a “trademark”.

Omesh PuriAssociate partnerLexOrbis
Omesh Puri
Associate partner

In this case, Christian Louboutin SAS v Abubaker & Ors, the mark in question was the colour red applied on the entire outer face of the sole of ladies’ footwear. The plaintiff claimed exclusive ownership over its red sole trademarks in respect of the ladies’ footwear it designed and manufactured. A suit for passing off and infringement of trademark was filed, seeking an injunction and damages against the defendants, who were selling shoes the soles of which were red.

The plaintiff, while arguing that the defendants had infringed its registered red sole marks, placed reliance on two judgments of single judges of Delhi High Court. The first case was Deere & Company & Anr v Mr Malkit Singh & Ors (23 April 2018), in which it was held that the plaintiff had exclusive entitlement to use the colour green as a trademark in respect of certain agricultural machinery. The plaintiff’s application for an interim injunction was allowed and the defendant was restrained from using the colour green on its agricultural machinery.

The plaintiff in the second case was the same as in the current case. In Christian Louboutin SAS v Mr Pawan Kumar & Ors (12 December 2017) the court upheld the plaintiff’s exclusive entitlement to trademark ownership of the colour red on the sole of ladies’ footwear and awarded the trademark well-known status. The plaintiff argued that these judgments were binding on the court as they were delivered by coordinate benches.

Dheeraj KapoorAssociateLexOrbis
Dheeraj Kapoor

The court observed that the judgments in Deere & Company and the earlier Christian Louboutin case had not considered section 2(m) of the act, which being vital to the issue ought to have been taken into account. This section is deemed to prohibit a single colour from being given the status of a trademark and thus no manufacturer or seller can be given exclusive ownership of such a trademark.

The court also laid emphasis on section 30(2)(a) of the act, which also had not been taken into consideration in the earlier judgments. This section enables the use of a registered trademark by another, which will not amount to infringement, if such use indicates a characteristic feature of the goods. As the court held that a red sole was a feature that enhanced footwear’s visual appeal and marketability, a third party was free to use it as a characteristic feature of its products.

The plaintiff further argued that the red sole can be taken as a “device”, which is included in the definition of mark, however, the court observed that to be so considered it must be a standalone device and not a feature or part of the product. According to the court, when the law does not allow a single colour to be considered as a mark or trademark directly, this cannot be done indirectly under the guise of a device mark. In view of the above, the court did not consider the cited judgments to be binding.

Although this judgment has rejected the possibility of trademark protection for marks comprising a single colour, one thing that may have been left open for further judicial scrutiny is whether the definition of “mark”, which includes a combination of colours, is exhaustive in nature. If not, even a single colour, distinctive enough to signify a particular source of certain goods or services, can be interpreted to fall within the definition of a trademark.

The result of any appeal in this case remains to be seen as does the fate of other single-colour marks and any that will be applied for in the future, with regard to the claim of exclusive ownership and trademark protection.

Omesh Puri is an associate partner and Dheeraj Kapoor is a senior associate at LexOrbis.

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