Christian Loubotin v Abuwaker

Date: 25 May, 2018.

Delivered by- Justice Valmiki Mehta
ABSTRACT- Christian Loubotin, the plaintiff has filed a suit against the defendant for infringing
their trademark, i.e. using sole of the shoes in red colour. Court has held that there is no
infringement as a valid mark has not been constituted. The statue clearly deals with “combination
of colours” for constituting a valid mark and not a single colour. Further under Section 30(2)(a),
even a registered trademark could be used by other manufacturers if it falls under characteristics
of the goods and Colour is clearly a characteristic of the good used for designing and identification
of the product
FACTS- The defendants are carrying out their business at two outlets in Bombay. They are
engaged in selling shoes and are selling it by coloring the soles of shoes as red thereby, infringing
the Christian Loubotin’s (hereinafter the plaintiff) registered trademark. Plaintiff has also pleaded
that defendants are passing off their footwear as that of the plaintiff because of use of the red colour
in the soles of the ladies footwear sold by the defendants.

ARGUMENTS RAISED- For a trademark to be a qualified trademark, it has to clear the standards
of a mark set under Section 2(m) of the Act. The said provision clearly uses the words
“combination of colours” and thus, a single colour cannot fall under the definition of a “mark”.
Plaintiff has relied upon a foreign case, Qualitex Co. Vs. Jacobson Products Co., Inc. to prove its
claim that a single colour can be classified as a trademark. To this court has held that US laws and
Indian laws are different to the said context and thus, the said case cannot be applied to the present
scenario. Further, court has also rejected to rely upon Deere & Company & Anr. vs. Mr. Malkit
Singh & Ors, CS and Christian Louboutin Sas V. Mr. Pawar Kumar and Ors. as there is a flaw
in both the judgement as they have interpreted a single colour as trademark thereby ignoring the
provisions of the statute. Also, overriding provisions of section 30(2) has not been discussed in the
said judgements, thereby their ratio cannot be applied in the present matter.

Further plaintiff argued that if the usage of single colour is capable of achieving distinctiveness,
i.e. capable of distinguishing the goods and services of one person as being the source of the goods,
it can become a valid trademark. Section 32 of the Act is held to be of a determinative of matter
that even if there is an absolute bar for registration of a single colour as a trademark because of
Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, however on the use of such a trademark, a
distinctiveness is acquired for the trademark because of its use in relation to the goods for which
the trademark is registered, then such a trademark cannot be held to be invalid.
But this argument of plaintiff has ignored the fact that the first essential for qualifying as a
trademark must be that it must be a valid “mark” itself.

The plaintiff’s next contention was its registration of red sole is as a device trademark and thus a
device is capable of being a mark and therefore it is a valid trademark. It was also found to be
fallacious as what is sought to be included in the expression 'device' for the device to be a
trademark, such a device must have standalone independent existence in itself so as to have an
identity of its own even without being part of the product/goods. By simply applying a color to a
footwear will not bring it under the ambit of being a device.

In another claim by the Plaintiff, it relied upon Section 10(2) of the Act to classify it as a valid
trademark. To this, it was held that Section 10(2) has to be read along with 10(1) and it clearly
uses the expression, “combination of colours”. In Section 10(2), the expressions/words 'trademark'
and 'colour' are used for referring to the trademark used which is not a colour and therefore the
entitlement to use a trademark which is not a colour for all colours to be applied to a trademark.

Further, plaintiff has ignored the provision of Section 30 of the Act which provides that although
a plaintiff may be an owner of a particular trademark, yet if the registered trademark of the plaintiff
is used by any other person, whose use of the registered trademark is as per the entitlements of the
different sub-sections of Section 30 of the Trade Marks Act, then such use cannot be prevented by
the registered owner of the trademark. Under Sec 30(2)(a) even if a person is a registered owner
of a trademark but if the trademark of the registered owner pertains to the characteristic or
characteristics of the goods, then another person when he uses such characteristics of the goods
for the goods manufactured and marketed by that another person, the same would not result in
infringement of the registered trademark. Characteristic performs a non-trademark function as a
feature of the product, and therefore a feature of a product cannot be prevented from being used
by the other manufacturers and sellers in the market for their goods, even though the feature or
characteristic or characteristics or a functional aspect is got registered by a manufacturer or seller
as his trademark for his product/goods. A single colour which is applied to the goods which are
sold would in normal and ordinary circumstances pertain to them characteristics of the goods.
Colour is applied to certain goods for the purpose of the appeal of the goods or for the looks of the
products/goods.

The claim of passing off as contended by the Plaintiff was also defeated on similar grounds.

JUDGEMENT- Use of a single colour of the plaintiff does not qualify the single colour to be a
trademark in view of provisions of Sections 2(m) and 2(zb) of the Trade Marks Act. Also, Section
30(2)(a) of the Trade Marks Act, in the facts of the present case, is a complete disentitlement to
the reliefs claimed by the plaintiff on the basis of causes of action pleaded in the plaint. Thus,
plaintiff’s claim shall not succeed as no infringement has been caused.