Anand and Anand
International perspective on single-colour trademarks
It is recognised across various jurisdictions around the world that a colour, either standing alone or in combination with another colour, can function as a trademark and is registerable.
Unlike conventional trademarks (ie, words, devices and labels), colour trademarks face many different challenges at the time of registrability and enforcement. In fact, all non-conventional trademarks (eg, smells, sounds, textures and motion) face their own distinct challenges. It is well-established that a colour trademark can never be inherently distinctive, but that it can become protectable on proof of having acquired secondary meaning or distinctiveness.
Colour trademarks, like any other trademark, can act as source identifiers, helping manufacturers to distinguish their goods and services from those of others. Some famous examples which have been protected by the courts and trademark offices include the green-gold colour of the dry-cleaning pads used by Qualitex, the robin-egg blue colour associated with Tiffany & Co and the brown colour used by UPS for their trucks.
Although colour combinations have been widely protected, the issue of whether a single colour can act as a trademark is a contentious one. One famous case among the initial cases regarding the protection of single-colour trademarks was Owens Corning in the United States, which found the colour pink for insulation products to be exclusively associated with the company Owens Corning. Inconsistencies remained among the US courts on the issue of protectability of single-colour trademarks for some time, before the issue was conclusively settled by the US Supreme Court in Qualitex Co v Jacobson Products Co Inc (514 US 159 (1995)), wherein the court gave due recognition and protection to a single-colour trademark: the green-gold colour trademark of Qualitex, which was used by Qualitex for dry-cleaning press-pads. In that case, the arguments which had been proffered against the protection of a single colour as a trademark were essentially twofold:
- the colour depletion theory (ie, that allowing manufacturers to monopolise colours would soon exhaust the limited palette of colours, which would be unfair to other traders); and
- the difficulty in determination of deceptive similarity for colour trademarks, as comparing different shades of colour is highly subjective.
These arguments were rejected by the court on the following grounds:
- The court stated that the colour depletion theory is an occasional problem and thus cannot justify a blanket prohibition against registrability of colours as trademarks. Moreover, if such a problem does arise, the doctrine of functionality is always available to prevent anti-competitive consequences.
- As regards the shade confusion problem, the court stated that a colour mark in this respect is not special compared to other marks and that legal standards exist to guide courts in making such comparisons (eg, possibly replicating lighting conditions under which a coloured product is normally sold to determine deceptive similarity between marks).
Protection of ‘red sole’ trademark internationally
Christian Louboutin’s red sole trademark has been the subject of litigation in various jurisdictions, the earliest of which was the case filed by Christian Louboutin against Yves Saint Laurent (YSL) before the Manhattan District Court and which later went to appeal at the Court of Appeals for the Second Circuit.
In Christian Louboutin v YSL the Manhattan District Court found that the use of a single colour in the fashion industry would be deemed inherently functional and thus not protectable as a trademark. The Appellate Court reversed this finding and held that there can be no per se industry rule governing the protection of single-colour marks in the fashion industry. Further, that the district court’s finding that a single colour can never serve as a trademark in the fashion industry was inconsistent with the decision of the Supreme Court in Qualitex, which had laid down that there can be no special legal rule preventing colour alone from serving as a trademark and that each case requires a factual determination to be made.
YSL’s main contention was that Christian Louboutin’s red sole trademark was not entitled to trademark protection as it is functional in nature. While dealing with this issue and giving a finding that the trademark was not functional, the court discussed the two affirmative defences to a trademark infringement claim involving functionality:
- Traditional or utilitarian functionality – wherein a product feature is considered to be functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. A feature is considered essential to the use or purpose of the article if it is dictated by the functions to be performed by the article.
- Aesthetic functionality – which contemplates a situation where:
- the aesthetic design of a product is itself the mark for which protection is sought; and
- the right given to a market holder to use the mark exclusively would put competitors at a significant non-reputation-related disadvantage.
The Court of Appeals held that the red sole trademark was neither aesthetically functional nor had utilitarian functionality and that “by placing the color red in a context that seems unusual and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which to those in the know instantly denotes his shoes’ source”.
Thereafter, the validity of the Christian Louboutin trademark was upheld by a series of decisions, including SAS Kesslord Paris v Christian Louboutin (064/2018, Paris Court of Appeal, 15 May 2018); Christian Louboutin v Van Haren Schoenen BV (Case C-163/16, European Court of Justice, 12 June 2018); Christian Louboutin v Gerhard Luther (Case 5W 14/18, Hanseatic Court of Appeals, 26 June 2018); and Van Haren Schoenen BV v Christian Louboutin (Cancellation Division, C-406B, EUIPO, 22 May 2019).
India’s perspective on colour trademarks
In the Indian context, the issue of protection and enforceability of single-colour trademarks is fairly new. However, use of colour combinations as trademarks has been protected by the Indian courts – for example, courts in India have protected the red and white colour combination used by Colgate for toothpaste and the green and yellow colour combination used by John Deere in respect of its Harvester tractors.
It could be argued before the Indian courts that the Trademarks Act 1999 does not contemplate protection for single-colour trademarks because of the use of the term “combination of colours” in Sections 2(1)(m) and 2(1)(zb). However, this argument does not appear to be convincing, as the two definitions are inclusive, not exhaustive. Moreover, a single colour does qualify for protection as a trademark as it is capable of serving the basic role and purpose of a trademark (ie, to distinguish the goods or services of one trader from the other).
The Draft Manual of the Indian Trademark Office 2015 also provides that single colours may be protectable as trademarks based on strict evidence of acquired distinctiveness. The threshold of evidence required to demonstrate such distinctiveness is much higher than required for a conventional word or device mark and a trademark owner must necessarily furnish evidence to establish that the colour on its own, without being used in association with a word mark, can act as a badge of origin for consumers. Such evidence could include market surveys, consumer testimonials, advertising expenditure information, as well as other evidence to show significant and substantial use of the colour mark.
The doctrines of utilitarian and aesthetic functionality have also found recognition in the Indian statute, wherein these defences and restrictions have been put in place for shape marks in Section 9(3) (which deals with absolute grounds for refusal of trademarks). While Clauses (a) and (b) of Section 9(3) cover utilitarian functionality, Clause (c) covers aesthetic functionality.
Although the Indian statute does not expressly lay down the above restrictions for colour marks, it may be argued that the provisions applicable to shape marks can also be applied to colour marks.
However, these arguments are not persuasive as the red sole trademark:
- is not merely a single colour trademark, but a device mark comprising the arbitrary placement of a particular shade of the colour red on a particular position on the shoe (ie, the sole);
- is not utilitarian, as it cannot be argued that the mark is essential to the use or purpose of the article or that it affects the cost or quality of the article;
- cannot be held to be aesthetically functional as it is not merely ornamental, having been used with the intention of being used as a source identifier;
- has a value that stems from the marketing efforts of Christian Louboutin and the public’s association of the colour of the sole with the brand; and
- is monopolised by Christian Louboutin, but it in no way hinders competition as competitors have a range of alternative colours available at their disposal for the soles of their shoes.
Through wide and uninterrupted use on Christian Louboutin shoes, the red sole trademark has become synonymous with the brand. It serves all the functions of a trademark and deserves the protection afforded to conventional trademarks.
Protection afforded to red sole trademark in India
The red sole trademark was granted trademark registration by the Indian Trademark Office on 25 November 2015 after rigorous examination which required the applicant to submit substantial evidence to demonstrate that the characteristic red soles had acquired distinctiveness.
Christian Louboutin has since successfully enforced its red sole trademark in at least five cases filed before the Delhi High Court. In Christian Louboutin SAS v Pawan Kumar (CS (COMM) 714 of 2016), which had been filed against certain shops in Karol Bagh, the Delhi High Court decreed the lawsuit in favour of the plaintiff with a finding that, based on the material on record, the plaintiff’s red sole trademark had acquired “well-known character”.