The Hon'ble Delhi High Court in one of its recent judgement on May 25, 2018, in the case of Christian Louboutin v Abu baker, held that the use of a single color of Christian Louboutin SAS does not qualify the single color to be a trademark in view of provisions of Sections 2(m) and 2(zb) of the Trade Marks Act.
The Christian Louboutin SAS (hereinafter referred to as 'the Plaintiff') are exclusive owners of registered trademark 'RED SOLE' in India. The details of the trademark registrations of the Plaintiff as given in the plaint are mentioned in the table below:
The Plaintiff filed a suit seeking reliefs of injunction against the infringement of its trademark, passing off, damages etc. against Abubaker and some other shoe outlet owners (hereinafter collectively referred to as 'the Defendants'). The major pela given by the Plaintiff was that 'RED SOLE' is not a wordmark but it is literally a red colour shade applied to the soles of the ladies' footwear manufactured by the Plaintiff.'
Further, the Plaintiff pleaded that the Defendants are carrying on its businesses at two outlets in Bandra and Vile Parle in Mumbai under the outlet named 'Veronica', which is also a wordmark. They contended that the Defendants were infringing and passing off their goods as that of the Plaintiff's because they are selling shoes by coloring the soles red. The sample goods sold by the Defendants are given below:
Whether the suit plaint makes out a cause of action as required by law?
Can a single color be a trademark under the Trade Marks Act, 1999?
The Delhi High Court (hereinafter referred to as 'the Court') made a proposition to the Learned Senior Counsel for the Plaintiff that no legal cause of action can be said to be made out as per the averments of the plaint for the Plaintiff to be granted reliefs claimed in the suit.
The Plaintiff relying upon the case of Bright Enterprise Private Ltd. & Anr. Vs. MJ Bizcraft LLP & Anr.1 argued that the Court should not act as an adversary and the present commercial suit cannot be dismissed at this stage by holding that there is no real prospect for the Plaintiff to succeed inasmuch as this plea under Order XIIIA CPC as applicable to commercial suits can only be taken by the Defendants after they are served in the suit, and the Defendants move such an application under Order XIIIA CPC for dismissing the suit on the ground that Plaintiff has no real prospect to succeed, with a 30 days' notice being given in terms of the application under Order XIIIA CPC to the Plaintiff to contest this issue.
On the issue of capability of single color as a trademark, the Plaintiff relied on Deere & Company & Anr. vs. Mr. Malkit Singh & Ors2 wherein it was held that a single color is entitled to protection as a trademark and Christian Louboutin Sas vs. Mr. Pawan Kumar & Ors.3 wherein a Single Judge of this Court has passed a decree in favor of the present Plaintiff by holding the Plaintiff's entitlement to exclusive ownership of the trademark of red colour on the soles of its ladies' footwear.
Further, the Plaintiff contended that despite the bar contained in Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act of registration of a single colour as a trademark, a single colour is capable of achieving distinctiveness i.e. capable of distinguishing the goods and services of one person as being the source of the goods, and once distinctiveness is achieved, the single colour can become a valid trademark.
Analysis by the Court on Single Color Trademark
The Court while examining the question that 'on taking the contents of the plaint as correct whether there exists a legal entitlement in the Plaintiff to claim the reliefs as prayed in the suit?' took into consideration Section 2 (m), 9, 29, 30, 31 and 32 of the Trade Marks Act, 1999.
Focusing on the concept of single color trademark, the Court was of the view that 'the word trademark consists of two words, i.e. trade and mark. 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.
The Court disagreed with the contention of Plaintiff wherein it placed reliance on the case of Qualitex Co. v. Jacobson Products Co., Inc. and argued that a single colour is recognized for being granted the status of a trademark in USA, and therefore this Court also should hold that single colour is entitled to protection as a trademark under the Trade Marks Act of this country. The Court held that a judgment passed by a Court not of this country, is a judgment as per the statute applicable with respect to the law of trademarks in that other particular country, whereas this Court has to decide as per the statute of this country viz the Trade Marks Act, 1999.
The Court also rejected the contention of the Plaintiff where the reliance was placed on Deere & Company & Anr. vs. Mr. Malkit Singh & Ors Christian Louboutin Sas vs. Mr. Pawan Kumar & Ors. The reason of the Court was that the judgements have not considered the definition of the expression 'mark' as found in the Trade Marks Act as also Section 30(2) of the Trade Marks Act.
The Court agreed with the Plaintiff on the fact 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 Court further pointed out that whatever is sought to be claimed as a trademark must first also be a mark. The Court held that the benefit of the Proviso to Section 9(1) of the Trade Marks Act read with Section 32 of the Trade Marks 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.
Taking into consideration Section 30 of the Trade Marks Act, 1999, the Court held that even if a person is a registered owner of a trademark but if the trademark of the registered owner pertains to the characteristic or characteristics of the goods, then another person when he uses such characteristic or characteristics of the goods for the goods manufactured and marketed by that another person, the same would not result in infringement of the registered trademark. In the opinion of this Court a characteristic or characteristics of goods will include such functional aspects of the goods which would give an appeal or looks to the products/goods. 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.
Decision of the Court
The Court held that:
the Plaintiff will not be entitled to the reliefs urging infringement of its trademark or the Defendants passing off its goods as that of the Plaintiff or that the Plaintiff can claim existence of dilution, unfair competition, etc.
use of a single colour of the Plaintiff does not qualify the single colour to be a trademark in view of provisions of Sections 2(m) and 2(zb) of the Trade Marks Act.
Section 30(2)(a) of the Trade Marks Act, in the facts of the present case, is a complete disentitlement to the reliefs claimed by the Plaintiff on the basis of causes of action pleaded in the plaint.
IMPACT OF THE DECISION
This decision of Delhi High Court will have far reaching impact. The question that the decision now poses is what will be the fate of single color marks which are already registered as trademarks? Details of few single color registered trademarks as per the records of the trademark registry is given below:
1 CS (Comm.) No. 850/2016, IA No. 8343/2016 and IA No.
2 Decided on: 08.08.2016 CS(COMM) 738/2018, Decided On: 23.04.
3 2018 2018 (73) PTC 403 (Del)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.