The Delhi High Court recently dismissed the suit filed by International Luxury Shoe Designer Christian Louboutin against Defendants, who carry their business at two outlets located at Mumbai, for infringing the Plaintiff’s trademark ‘RED SOLE’ stating that ‘single colour cannot be exclusively appropriated by a manufacturer or seller for use of that one single colour as its trademark’.
In the present matter, the Plaintiff contended that the Defendants were passing off their footwear as that of the Plaintiff because of use of the red colour on the soles of the ladies footwear sold by the Defendants and that there is passing off, notwithstanding that the Defendants’ trademark for its shoes is a word mark ‘VERONICA’.
The Court held that, “… no doubt the Plaintiff by virtue of Proviso of Section 9(1) and Section 32 of the Trade Marks Act can claim to have become owner of the trademark having the red colour applied to the soles of its shoes, yet even if the Plaintiff is the owner of such trademark being a single colour red applied to soles of ladies footwear, then because of and by virtue of Section 30(2)(a) of the Trade Marks Act, other manufacturers or sellers are not prohibited from using the colour red on their goods/shoes/footwear if the colour is serving a non-trademark function i.e., colour is a feature of the product or goods…”.
The Hon’ble Court further held that the use of the colour red by the Defendants on the soles of ladies footwear being sold by the Defendants will cause passing off, is a misconceived argument for the following three reasons:
- Firstly, because, a single colour cannot become a trademark. Once a single colour is not capable of being a trademark, then the Plaintiff cannot claim rights in one colour as a trademark for exclusive use of the Plaintiff simply because the Plaintiff may have got / used the single colour as its trademark.
- Secondly, the issue of passing off would arise only if there was disentitlement in the Defendants to not use the red colour shade in the soles of the ladies footwear being manufactured and sold by the Defendants, but there is no such disentitlement for the Defendants because the user by the Defendants of the red colour shade on the footwear is pursuant to the legal rights conferred upon the Defendants under Section 30(2)(a) of the Trade Marks Act as already discussed above. The Defendants are entitled in view of Section 30(2)(a) of the Trade Marks Act to use red colour in the soles of their footwear, even if the Plaintiff is held to be the owner of their trademarks, as the use of red colour in the soles is a characteristic of the product shoe.
- The third aspect is that the issue of passing off and deception would arise if the Defendants were not selling their goods under any word mark, and simply by applying red colour to the soles of the ladies shoes / footwear, but that is not the case herein, since the Defendants are very much using a word mark being “VERONICA”. The Plaintiff is also using a word mark viz “CHRISTIAN LOUBOUTIN”, and which word mark of the Plaintiff is completely different than the word mark of the Defendants viz “VERONICA” and therefore, there does not arise any question whatsoever of any deception or confusion.
In view of the aforesaid discussion, 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 the Trade Marks Act.
Contributor to present post is Abhilasha.
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