On June 12, 2018, the European Court of Justice produced in the case Christian Louboutin SAS v. Van Haren Schoenen BV, a radical judgment that could pave the way for setting up a much stronger IP regime; one that could go a long way in combating the forgery and design-copying issues persisting in the fashion industry. The judgment could also, however, lead to a system that stifles creativity and confers monopolies to the top designers. The ECJ affirmed the French designer's position that its "red-sole mark" that has become a well-known trademark of its footwear for women, is not a shape mark per se, and thus is not invalidated by the Trade Mark Directive. The Court clarified that while the shape of the goods does play a role in the spatial delimitation of Louboutin's red colour, the trademark solely intends to protect the application of a colour on a specific position of the shoes, instead of protecting the shape as such.
Article 3 of the Trade Mark Directive 2008/95, entitled 'Grounds for refusal or invalidity', provides:
1. The following shall not be registered or, if registered, shall be liable to be declared invalid: ...
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;
Christian Louboutin designs and produces shoes, and has a mark registered with Benelux1 Office for Intellectual Property since January 2010. The mark at issue is described as follows: "The mark consists of the colour red (Pantone 18-1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)." In the instant case, Louboutin initiated proceedings against Van Haren, which operates shoe retail outlets in the Netherlands. The ECJ was tasked with answering whether, 'colour' would come under the interpretation of Article 3(1)(e)(iii) of Directive 2008/95 as 'consisting exclusively of a shape'. The referring court was of the opinion that colour is inextricably linked to the shoe sole and therefore that mark cannot be regarded merely as a two-dimensional figurative mark.
The ECJ, however, went on to point out that it does not follow from Directive 2008/95, the case-law of the Court, or the usual meaning of that concept, that a colour per se, without an outline, may constitute a 'shape'. Even though the shape plays a role in creating an outline for the colour, it cannot be said that the mark consists of the shape as well considering the registration sought to seek protection for the application of the colour red to that part of the product, and not seek protection for the shape as well. The description of the mark specifically mentions that the contour of the sole is not a part of the mark. Thus, single-colour marks such as that at issue in the instant case, are not invalidated by Article 3(1)(e)(iii) of the Directive, as the mark does not exclusively consist of a shape.
Until May 2018, single-colour trademarks were valid as per the Trademarks Act 1999, and Louboutin had a registered trademark of 'RED SOLE' in India. In the December 2017 case of Christian Louboutin SAS v. Pawan Kumar and Ors., it was held that Christian Louboutin was the registered owner of the well-known trademark 'RED SOLE', and defendants were found guilty of infringement. However, in the recent case of Christian Louboutin SAS Vs. Abubaker and Ors., refused the trademark of red colour on the sole of heeled shoes on the point that, the mark was just consisting of a single colour red and this is invalid as per the definition of a mark under Section 2(m) of the Trademarks Act, 1999 which requires marks to be a 'combination of colours'. Thus, the colour red not even being a mark cannot be a trademark in spite of achieving distinctiveness.
'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 as well as a trademark'. The Court pointed out that the usage of the phrase "combination of colours" in Section 2(m) shows the intention of the legislature to not allow single-colour trademarks. The Court distinguished this case from the previous Deere & Company & Anr. v. Mr. Malkit Singh & Ors., and Christian Louboutin Sas v. Mr. Pawan Kumar & Ors., stating that in both these cases, the provisions of Section 2(m) and Section 30 (2)(a) were not considered. Section 30(2)(a) precludes a claim for infringement, stating that when a person other than the registered owner of a trademark uses the mark to indicate a characteristic of the good or service, the trademark is not infringed. Here, the court appears to have misinterpreted the provision to mean mark 'in relation to' a characteristic instead of mark 'indicating' a characteristic. Moreover, the court refused the passing off remedy that is a common law remedy independent of Indian statutes also, on similar grounds, in spite of Section 27(2) of the Trade Marks Act, 1999 mandating that nothing in the statute shall affect the rights of a person filing for passing off.
The way forward for India
While reviewing the status of single-colour trademarks in India, one has to make a note of the Draft
Manual of Trade Marks Practice and Procedure, introduced in 2015, which provides for single-colour trademarks. The manual declares that it will be extremely difficult, but single-colour trademarks can be registered if the mark is proved to be rare and unique in the trade, and can be recognised by public and traders as a signature of the brand in that class of goods, as is the case of Louboutin's red soled shoes. This is clearly indicative of the legislature's intention to amend the statute or broaden the definition of a mark to include single-colour marks as a valid trademark. Moreover, the Manual discusses other non-conventional trademarks as well, and points out that in UK, there exists a practice which allows graphical representation of marks of colour alone, if along with the written description of the colour, the colour code from a recognised colour identification system like 'Pantone' is submitted. The Manual notes that the practice in India does not provide for such an interpretation, but the view expressed in the official practice of U.K. is relevant to our practice. The introduction of non-conventional marks is a welcome step, but the manual has still not been notified and has been pending since 2015, which is a matter of concern. Colour schemes and colour marks have a huge impact on a country like India with its many diverse languages, and majority of its population unfamiliar with Roman Script. The main factor will be whether the brand has been advertised enough to ensure that the public can recognize it as a badge of origin. When allowing non-conventional trademarks such as single-colour trademarks, the courts will have to ensure that the test of distinctiveness is very strict. Functionality doctrine which mandates that the colour mark in question, must not be functional in nature, with regard to the particular product or service, is also a key issue. The legislature must take steps to liberalise the IP regime in India to ensure no one brand obtains a monopoly and at the same time ensure the requisite protection of intellectual property.
1. The Benelux Union is a politico-economic union of three neighbouring states in Western Europe: Belgium, the Netherlands, and Luxembourg.
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