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Can a single colour ever become a trademark

The above mentioned issue was discussed in the case of:


Christian Louboutin SAS v. Abubaker & Ors.


Court: High Court of Delhi Case No: CS (Comm.) No. 890/2018

Order dated: 25th May, 2018


Issue: Can the use of a single colour, claimed to be a trademark on products sold in the market, amount to the use of a ‘trademark’ in law? Can a single colour ever become a trademark as defined in the Trade Marks Act, 1999?


Judgement:

In this case, 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 that 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. However, the Court 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. 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 incapable of being elevated to the status of a “trademark”. Although the plaintiff relied on a previously decided case of Christian Louboutin SAS v Mr Pawan Kumar &Ors (12 December 2017) wherein the court had 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 Court in the present case observed that the judgment relied upon 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 held that a red sole was a feature that enhanced footwear’s visual appeal and marketability, and a third party was free to use it as a characteristic feature of its products. This order has been overruled by the Division bench which has been discussed herein below.





Christian Louboutin SAS v. Abubaker & Ors.


Court: High Court of Delhi Case No: RFA (OS)(COMM) 13/2018 & CM 29064/2018

Order dated: 11th April, 2019


Issue: Can a single colour ever become a trademark as defined in the Trade Marks Act, 1999?


Judgement: The Division Bench of the Delhi High Court allowed an appeal filed by Christian Louboutin. The appeal challenged the judgment passed by a single judge of the court in a suit filed seeking monopoly on its RED SOLE trademark. The Division Bench has set aside the judgment and observed that that the Single Judge’s invocation of a provision under the code of Civil Procedure dealing with ‘judgement on Admissions’, to dismiss the lawsuit at the first date of hearing was erroneous. It was observed that the impugned Judgment passed was contrary to the other orders passed in favour of Christian Louboutin by coordinate Single Benches of the Delhi High Court, in particular the judgment passed recognizing the RED SOLE trademark as a well-known trademark.

The Hon’ble Bench stated that it was well established that in cases where there exists a difference of opinion on questions of law by coordinate benches, the matter should be referred to a larger bench.

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