India: Delhi High Court rules that single colour cannot be trade mark
In the case of Christian Louboutin SAS v Abubaker & Ors, a single judge of the Hon'ble Delhi High Court summarily dismissed a trade mark infringement and passing off suit on May 18 2018, without issuing summons to the defendants, holding that use of a single colour rather than a combination of colours does not qualify as a mark under Section 2(1)(m) and as a trade mark under Section 2(1)(zb) of the Trademarks Act 1999 (hereinafter the Act).
In the above-mentioned matter, a renowned shoe-maker, Christian Louboutin, filed a suit for infringement and passing off against a local Indian shoe manufacturer and its owner. Christian Louboutin stated that it was the owner of the registered trade mark RED SOLE under classes 25, 03 and 14, not being a word mark but rather a red colour shade applied to the soles of the footwear for women manufactured by the company. Christian Louboutin further pleaded that the defendants were colouring the soles of their shoes red, thereby infringing its registered red sole trade mark and also passing off Christian Louboutin's shoes as their own. However, when the single judge refused to issue summons and proceeded to summarily dismiss the suit, Christian Louboutin argued that the Court did not have discretion to dismiss the suit summarily under Order XIIIA Code of Civil Procedure 1908 (CPC) without issuing summons to the defendants and until the defendants filed such an application seeking dismissal of the suit; the Hon'ble Court has in the past passed interim injunction orders for single colour trade marks; the Court of Appeals in the US has upheld trade mark status for a single colour; single colour trade marks are permitted under Section 10(2), subject to Section 9(1) and Section 31 of the Act.
The single judge rejected all the contentions of Christian Louboutin and held that under Order XII Rule 6 CPC, the Court has the power and discretion to dismiss a suit if there is no valid cause of action. It further held that the definition of mark under Section 2(1)(m) of the Act uses the term "combination of colours" and not "colour". Therefore, a single colour cannot be considered a mark and subsequently, a trade mark under Section 2(1)(zb) of the Act. The judge also pointed out that previous judgments passed by the Hon'ble Court have failed to consider Section 30(2) of the Act and are therefore distinguished from the facts of the present case. The judge held that trade mark law in the US does not prohibit use of a single colour as a trade mark which is why courts in the US have upheld the status of single colour trade marks. The single judge rejected Christian Louboutin's argument on Section 9(1) read with Sections 31 and 32 of the Act concerning the achievement of distinctiveness of a trade mark by the user, by holding that what cannot be considered as a mark in the first place cannot therefore be upheld as a trade mark under the Act. Lastly, the single judge placed reliance on Section 30(2)(a) of the Act to conclude that the said section permits the use of a registered trade mark which pertains to a characteristic of a good, by a third person, if the said trade mark is used as a characteristic of goods and not as a trade mark. The single judge also rejected the plea of passing off on the ground that Christian Louboutin cannot claim any rights under its trade mark as it is not a valid trade mark and the defendants are not disentitled under the Act, owing to Section 30(2)(a), from using the company's trade mark. It was held that the defendants were selling their products under their own name M/s Veronica, clearly distinguishing their products from those belonging to Christian Louboutin.
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