Red: The Colour of Fashion or Confusion?
Updated: May 6, 2020
The typical case of the ‘Red Sole’ used by the French Designer Company Christian Louboutin SAS, producer of high end luxury shoes, among other products, has been a topic of debate since the first time it was bought before the Courts of Delhi. The Trade Marks Act 1999 covers “colour adjustment and includes any combination”i in the scope of “Marks”. The Court has given a fresh set of interpretation to the concept in the three times it was bought up before the Court each of which is poles apart from the preceding one. The first time such a case was bought before the Court. In the first case of Christian Louboutin SAS vs Mr. Pawan Kumar & Orsii where the main issue to be answered by the court was:
Whether the Court could give exemplary or punitive damage for a Trade Mark Infringement?
The plaintiff claims that its “Red Sole” has been recognised of distinctive nature by offices of Trade Mark worldwide and that the colour used is a specific tone of Red (pantone no. 18.1663TP) and is known for its uniqueness. The same has also been applied for trademark registration across the world, and approved in countries like India under Registration Number 1922048iii. Their contention against the defendants is that they are infringing the Plaintiff’s trademark by using the red sole in their shoes and prayed before the Court to pass an order of injunction restraining them from doing so and award the plaintiff with exemplary damages for the losses suffered.
It is pertinent to mention here that the Plaintiff’s brand is an international luxury brand with its presence world-wide and it was from the year 1992 that the plaintiff decided to use a peculiar colour of red on the outsole of his shoes, and has kept the trend alive in almost all his creations thereon. Therefore, the ‘Red Sole’ becoming a signature style of the plaintiff not only in India, but worldwide. The same had been applied as a Trademark as well in various jurisdictions including that of India as we know.
The plaintiffs claimed to have banked on the goodwill, reputation and sale by way of their ‘Red Sole’ and claimed that the defendants should be restrained from infringing their trademark and using a similar ‘Red Sole’ which is not only a well-recognised brand signature of the plaintiffs but also recognised by customers even in India. Further the plaintiff extensively advertises it’s “Red Sole’ signature style and has also won many recognitions and awards for the same, which the defendants are getting an undue advantage of, while infringing their trademark.
The Court relied on Hindustan Unilever Limited Vs. Reckitt Benckiser India Limitediv which considered the conditions laid down in Rookes vs. Barnardv as well as Cassell & Co. Ltd. Vs. Broomevi. The Court observed that To award punitive damages, the courts should follow the categorization indicated in Rookes (supra) and further grant such damages only after being satisfied that the damages awarded for the wrongdoing is inadequate in the circumstances, having regard to the three categories in Rookes and also following the five principles in Cassel.
Which are as follows:
a. Oppressive, arbitrary or unconstitutional action any the servants of the government; b. Wrongful conduct by the defendant which has been calculated by him for himself which may well exceed the compensation payable to the claimant; and
c. Any case where exemplary damages are authorised by the statute
(i) that the burden of proof rests on the plaintiff to establish the facts necessary to bring the case within the categories,
(ii) That the mere fact that the case falls within the categories does not of itself entitle the jury to award damages purely exemplary in character. They can and should award nothing unless
(iii) they are satisfied that the punitive or exemplary element is not sufficiently met within the figure which they have arrived at for the plaintiff's solatium in the sense I have explained and
(iv) that, in assessing the total sum which the defendant should pay, the total figure awarded should be in substitution for and not in addition to the smaller figure which would have been treated as adequate solatium, that is to say, should be a round sum larger than the latter and satisfying the jury's idea of what the defendant ought to pay.
(v) I would also deprecate, as did Lord Atkin in Ley v. Hamilton, 153 L.T 384 the use of the word “fine” in connection with the punitive or exemplary element in damages, where it is appropriate. Damages remain a civil, not a criminal, remedy, even where an exemplary award is appropriate, and juries should not be encouraged to lose sight of the fact that in making such an award they are putting money into a plaintiff's pocket, and not contributing to the rates, or to the revenues of central government.
On the basis of these judgments the Court awarded the plaintiff a sum equivalent to the illegal profit on the turnover of the defendants involved, along with high Cost and litigation fees.
A second case was filled by the Christian Louboutin SAS befor the Delhi High Court Christian Louboutin SAS vs Arubaker & Ors.vii where the Court had to decide whether the Red colour of the sole falls
In order to determine if the Court shall grant such injunction or not the Court had to first determine whether such Trademark at all existed give the fact that the mark was nothing but a specific tone of colour used by the plaintiff while the Act covers ‘a combination of colours’.
Reliance was placed on three major cases by the plaintiff Qualitex Co. Vs. Jacobson Products Co., Inc.\viii of the Appeals Court of the United States of America, Deere & Company & Anr. vs. Mr. Malkit Singh & Ors,ix and of course the first case Christian Louboutin Sas vs. Mr. Pawan Kumar & Orsx.
The Court observed that since the first case was indeed a foreign judgment and the laws of trademark were not in pari materia with that of India, specifically on the point of discussion- “combination of colours” and “single colours”, it does not stand binding to the Court. For the latter two cases the Court relied on the judgment of N. Bhargavan Pillai (Dead) by Lrs. and Another vs. State of Keralaxi where the Apex Court observed that :
12. (i) If a judgment passed by a court does not consider the direct provision of law, then that said judgment passed ignoring the direct provision of law would have no binding effect.
The Court therefore, came to a conclusion that since the respected Courts in each of the above judgments had not taken into consideration the provisions of the Trade Mark Act while considering the validity of the Mark in question therefore they, even though are judgments of coordinate jurisdictions cannot bind the Court while deciding the question whether a single colour can be given a status of a trademark under the Act.
Therefore, the Court in the second case decided that the ‘Trademark’ that the plaintiffs are basing their claim on, does not exist under the Act in the first place, as a result of which they should not be entitled to any relief. At the same time, the defendants used the words ‘Veronica’ on their goods which actually distinguished them from that of the Plaintiffs hence causing no confusion. It was on these grounds that the suit was dismissed by the Court.
This judgment was highly criticized given the fact that it opened the gates of confusion for the statuses of the marks which are single coloured in nature and have already been accepted.
Following the judgment, a third case was decided by the Hon’ble Delhi High Court Christian Louboutin SAS vs Ashish Bansal & Anr.xii. The plaintiff had prayed for an injunction restraining the defendants from infringing their Trademark by using the ‘Red Sole’ in their shoe. However, one peculiar point to be notice here was that the defendants were using a domain name which was very similar to that of the plaintiff as well. Here again the plaintiff had prayed for exemplary costs and the Court had ruled in their favour relying on the case of Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Labxiii. The Court had levied exemplary costs on the defendants along with an interest on the damages. The Court observed that the defendants cannot be given the freedom to enjoy a domain name similar to that of the plaintiffs while infringing their Trademark.
From the above cases we can see that the status of the Trademark in regard to ‘Red Sole’ has been uncertain, since the cases as decided by the Hon’ble Court are conflicting each other. At the same time the law of the land remains ambiguous on the point of colour as a trademark, unlike that of the USA which has extended its protection to single colours, as a result the cases decided in the USA cannot be referred to by Indian Courts.
The Trade Mark Manual however, throws some light on the use of a single colour as a trade mark xiv, it says:
A single colour may be registerable as a trade mark if it is very unusual and peculiar in a trade and is recognized by traders and consumers alike that it serves as a badge of origin for that class of goods.
Therefore, giving rise to further confusion as to status of a single colour as trade mark specially after the decision of the Court in the second case of the Christian Louboutin SAS chain as discussed above. Therefore, we believe that the ambiguity in the judgments of the three cases as well as the statutes being unclear as to the issue in hand, is a point of concern and needs to be revisited by the courts and settled by them for once and all, in order to bolt the gates of confusion and plug the loopholes in the law, which can be exploited if so remains.
[i] § 2(23) Trade Marks Act, 1999
[ii] CS(COMM) 714/2016
[iii] Pg 5 of the judgment CS (Comm) 714 of 2016
[iv] 2014 (57) PTC 495 [Del]
[v]  1 All ER 367
[vi] 1972 AC 1027
[vii] RFA (OS)(COMM) 13/2018 & CM 29064/2018
[viii] 514 U.S. 159 (1995)
[ix] CS(OS) No.3760/2014
[x] Supra at [ii]
[xi] (2004) 13 SCC 217
[xii] CS(COMM) 503/2016
[xiii] AIR 1965 SC 980
[xiv] A Draft of Manual of Trade Marks Practice and Procedure, Government of India Ministry of Commerce &Industries Office of Controller General Patents, Designs & Trade Marks, 2015 Pg. 84
Nikita Sultania (B.Com LL.B, Sem 6, ALSK)
Tulip Das (BBA LL.B, Sem 2, ALSK)