The Red Sole Conundrum!

This post discusses the Delhi High Court’s recent orders in matters involving the Christian Louboutin red shoe sole (shown below), and the conundrum that these orders have thrown up.

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In December 2017, the Delhi High Court granted an ex parte injunction restraining several third-parties from manufacturing and selling footwear with a red sole. In fact, in this case, the Court held that the red sole have become well-known.  The holding regarding the well-known status of the red sole was based on evidence led by Louboutin.  Subsequently, in May 2018, the Delhi High Court took a diametrically opposite view and held that the red sole as applied to shoes is not inherently distinctive. The most pivotal of the court’s observations was that the red sole did not even qualify as a mark, let alone a trade mark under the Trade Marks Act, 1999 (“Act”). In arriving at this decision, the Court relied on the definitions of a ‘mark’ and ‘trademark’ under the Act. As per the Act, a “mark” “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. While a trademark is defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours.

The Court, interestingly, was of the view that, a mark will first have to fall into the definition of a mark before it can qualify as a trademark.  The Court went on to say that, it is evident from a reading of the definition of a mark that a mark can only comprise of “a combination of colours” and cannot be a single colour. The Court also, quite vehemently, opined that the intent of the legislature was, clearly, to not allow proprietors to monopolize single colours.

Surprisingly, the Court also relied on one of the exceptions to infringement of trademark provided under Indian law, whereby, if a mark is used in relation to goods or services that indicate the kind, quality or other characteristics of the goods or services, then it does not constitute infringement. The Court opined that “characteristic or characteristics of goods will include such functional aspects of the goods which would give an appeal or looks to the products/goods”. The Court, quite unpredictably, held that the application of colour to the sole of a shoe qualifies as a function being performed on the goods to enhance its appeal, and therefore, the red sole is part of the functionality of a shoe, and would fall into the exception carved out under the Act. Lastly, the Court stated that since the defendants were using this “functional” aspect of Louboutin’s trade mark with a distinctive word mark, “VERONICA”, no cause of action could be made out against them.

Most recently, in a judgment pronounced on July 31, 2018, a Single Judge of the Delhi High Court granted Louboutin an ex-parte injunction against a defendant’s use of the red sole. A very interesting feature of this judgment is that the Single Judge talked about the Pantone number representing the colour red. Justice Khanna was of the opinion that when a specific colour, with a specific pantone number, is applied to the outsole of a shoe, it is unique. In his opinion, the red sole has become well known to fashion only because it was introduced by Christian Louboutin. It should be noted that Indian trademark law does not recognize pantone numbers.

It is interesting to see that, in a matter of two years, three judges of the Delhi High Court have shed light on different ways to look at Louboutin’s red sole mark. These decisions may pave way for a debate on the registrability of single colour marks and the significance of pantone numbers, specifically in relation to the restrictive field of fashion, where it is getting easier and easier for big brands to monopolize the industry.