Analysis of the Law Relating to Colour marks with respect to Christian Louboutin’s Red Sole Trademark.

The world of color marks is as fascinating as it is outrageous, where well-established brands pick a fight to ensure that no one piggybacks on his or her reputation and success or rather, he or she does not sail under false colors! While many products are recognized by the distinct colors used in their logos/covers or on the product itself, color marketability has reached an extent where colors are recognized by the products. (The blue color associated with Tiffany & co., (Pantone 1837)) is colloquially known as Tiffany blue. So is Caterpillar yellow of CAT.) There is more to color marks than what catches the eye. What exactly is the color trademark? Is it humanly possible for one to distinguish between so many colors that companies can claim a color to be their own? Where should the line be drawn? The issue of color marketability is not as black and white as we think. There seems to be a grey area. This Article is an attempt to analyze the scope of legal protection afforded to a non- traditional trademark in India, i.e. the color mark in light of the dispute pertaining to Christian Louboutin’s Red Sole Trademark.

About the Trademark
In the year 1992, Louboutin began coloring the outsoles of their shoes in red to act as a source identifier. This red sole became characteristic of Louboutin shoes. Subsequently, Louboutin’s red sole trademark was registered as a trademark in various countries around the world and became a signature of the Plaintiff. The ‘Red Sole” Trademark comprises a specific tone of color red, (Pantone No. 18.1663TP), applied to the outsole of a shoe. The extensive promotion of the luxury products under its RED SOLE Trademark as well as its extensive presence over the internet has enabled the mark to acquire a trans-border reputation. The brand is a well-known luxury brand, with a presence in over 60 countries including India as well as a popular website.
The decision of the Delhi High Court dated 31st July 2018 – Christian Louboutin SAS v Ashish Bansal & Anr.
Facts:
During a market survey conducted by an independent investigation by Louboutin, the infringing activities of the defendant in the case were discovered. During the course of the evidence in the case, it was found that the defendants were dealing in marks similar to that of Louboutin.

The decision of the Court
The court referred to the case of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Lab, AIR 1965 SC 980, wherein it was held that if the defendant’s mark is close, visually and phonetically similar, then no further proof is necessary. The Court was of the view that Louboutin was able to prove the adoption and use of counterfeit Trademarks and held that the plaintiffs are entitled to a permanent injunction. In addition to the above, the Court also held that the Louboutin is entitled to punitive damages taking into account the malafide conduct of the defendants.
This decision of the Honourable Court can be contrasted with Christian Louboutin SAS v Abubaker & Ors. dated 25th May 2018

Facts
In this case, Louboutin filed the suit seeking relief of injunction against the infringement of trademark, passing off, and damages. The Court was of the view that the RED SOLE mark cannot be afforded legal protection due to the following reasons:
Non-conformity with the provisions of the Act
The Court referred to the definition of mark and Trademark under the Trademarks Act, 1999:
“Section 2(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.
Section 2(zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors, and- (i) in relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark, and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
The Court was of the opinion that the definition of ‘mark’ makes it crystal clear that the legislature has categorically used the expression ‘combination of colors’. Hence ‘combination of colors is a sine qua non. Consequently, the Court held that a single color not being a mark, cannot be claimed as a trademark:
Once the legislature has intentionally and deliberately used the expression combination of colors, and it has not used the word color in the singular, it is clear that a single color cannot be a mark for being elevated to the status of a trademark. In the present case, there is no dispute that we are only dealing with a single color viz the red color shade which the plaintiff is using in the soles of its goods being ladies footwear. I, therefore, hold that by the very language of the definition of mark contained in the Trade Marks Act, a single color cannot under any circumstances be given the benefit for being used as an exclusively owned trademark of a manufacturer/seller etc.
Louboutin had also argued that even though there is an absolute bar for registration of single color as trade mark under Section 9(1) (a) and 9 (1) (b), 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 use, will become a valid trademark, and its registration cannot be canceled. The Court, however, did not accept this contention, owing to the fact that for the Red Sole Trademark to become a Trademark, it must first be a mark, which it fails to be so, owing to the single color predicament discussed above.
The plaintiff also argued that single color can be accorded the status of a Trademark by virtue of Section 10(2) of the Trademarks Act:
“10. Limitation as to colour.—
(1) A trademark may be limited wholly or in part to any combination of colors and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trademark.
(2) So far as a trademark is registered without limitation of color, it shall be deemed to be registered for all colors.”
The Court did not accept this contention of the argument. Section 10 (2) of the Act has to be read with Section 10(1) of the Act. Since Section 10(1) uses the expression, ‘combination of colors’, the expression ‘color’ found in Section 10(2) though used in the singular, actually implies the combination of colors. Furthermore, it was also held that singular color in Section 10(2) of the Act refers to the trademark used which is not a color. The Court further substantiated this with the following example:
For example when a wordmark which is registered as a trademark then since it is only a wordmark trademark with limitation for use of the trademark only to be used in a particular color or combination of colors of the trademark, then while depicting the wordmark trademark, the same can be depicted/shown/displayed in any colour or combination of colours.
The Court emphasized that by virtue of Section 30 (2) (a), Louboutin is not entitled to the reliefs claimed. The said section states that even if a person is a registered owner of a trademark and the trademark pertains to a characteristic of goods, then another person can use such characteristic without the use amounting to infringement of Trademark. The court was of the view that a single color applied to goods pertain to the characteristic of goods. It performs the function of adding appeal to the goods, as opposed to the function of a trademark.

Inapplicability of US Law
The Petitioner had relied on the decision of Appeal Court of USA, Qualitex Co. v Jacobsen Products Co. Inc, Case No. 93-1577 (decided on 28.03.1995) to contend that a single color can be recognized as a Trademark. However, the Court was of the opinion that the decision would not be applicable in this case. The referred judgment was not one passed by the Courts of India, and hence would not be applicable since it is not harmonious with the Trademarks Act, 1999.:
“The term “trademark” includes any word, name, symbol, or device, or any combination thereof- (1) used by a person or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”
Analysis of Indian Case Laws
Louboutin had also referred to Indian judgments like Deere & Company & Anr. vs. Mr. Malkit Singh & Ors, CS(COMM) wherein a single judge of Delhi Court had held that a single color is entitled to protection as a trademark in the case of green color on agricultural machinery, and Christian Louboutin Sas vs. Mr. Pawan Kumar & Ors., CS(COMM) 714/2016, wherein a Single Judge of this Court had passed a decree in favor of Louboutin for the Red Sole Trademark.
However, the Court relied on Padma Sundara Rao and Others v State of Tamil Nadu and Others. (2002) 3 DCC 533 to distinguish the above cases. Padma Sundara Rao had held that a ratio of judgment depends on its facts and difference in facts results in the difference in the ratio of two cases. Since the decisions did not make any reference to the provisions relating to the definition of Trademark, it cannot be said they have laid down a binding law that a single color can be a trademark. The Court also referred to N. Bhargavan Pillai ( Dead) by Lrs. And Another v State of Kerala(2004) 13 SCC 217 wherein it was held that if judgment passed by a court does not consider the direct provision of law while taking a decision, the said judgment will not have any binding effect.
No remedy for Passing Off
Although Louboutin argued that they must be granted damages for passing off, if not for infringement, the Court held that single color not capable of being a trademark, cannot even be awarded damages for passing off.

Conclusion
The diametrically opposite view taken by the same Court regarding the same subject matter brings doubt with regard to the law of the land pertaining to color marks. The decision of Delhi High Court dated 25th May 2018 has expounded on the law relating to color marks in India and answered the question in the negative. Additionally, on a plain reading of the provisions of the Trade Marks Act, 1999 it is clear that the trademark protection can only be accorded to “combination of colors”. However, the ambiguity pertaining to the interpretation of the provisions to answer the question of whether single colors can be a trademark is yet to be laid to rest.