Christian Louboutin’s red sole is a mixed bag when it comes to protection. Just days before the Paris-based footwear-maker-to-the-stars was handed a significant win from the highest court in the European Union, it was served with a loss before the High Court of Delhi, which held that Louboutin’s red shoe soles are not protected by trademark law – because a single color is incapable of being a trademark in accordance with the Trade Marks Act of 1999 – and as a result, Louboutin may not claim an exclusive right over such use in India.
The court’s decision – which was handed down on May 25 and stands in stark contrast to the findings of the Court of Justice of the European Union, which ruled last month that a single color can perform the essential function of a trademark – comes in the case that Louboutin filed against Abubaker & Ors, a Mumbai-based company that was selling footwear bearing red soles.
The Delhi court held that Section 2(m) of the Indian Trade Marks Act “prohibits a single color for being given the status of the trademark and thereby, prohibits exclusive ownership of such a trademark [by] a manufacturer or seller.” The court noted that while the Trade Marks Act does allow for some protection of color, the Act uses “the expression ‘combination of colors,’” meaning that “a single color does not qualify as a mark.”
The court was unpersuaded by Louboutin’s arguments that its red sole has achieved distinctiveness (or has come to identify the course of its brand in the mind of the ordinary consumer) thanks to its widespread advertising and product placement. Instead, in dismissing the case in Abubaker & Ors’ favor, the court held that because Louboutin’s red sole – as a single color – does not enjoy trademark protection, its trademark infringement claim was not an actionable one.
According to Ranjan Narula and Daleep Kumar of RNA Technology and IP Attorneys, “Since there is almost no precedent discussing protection granted to single color [in India], this is one of a kind decision.”
Omesh Puri and Dheeraj Kapoor of Delhi-based firm LexOrbis suspect that this may not be the final round in this case: “Although this judgment has rejected the possibility of trademark protection for trademarks comprising a single color, one thing that may have been left open for further judicial scrutiny is whether the definition of ‘trademark,’ which [only] includes a combination of colors, is exhaustive,” or whether it may also include single colors.
“If the definition is not exhaustive, single color – [if it is] distinctive enough to signify a particular source of certain goods or services – can be interpreted to fall within the definition of a trademark,” per Puri and Kapoor.
With that in mind, Louboutin may have an appeal in the works, particularly in light of the more recent favorable decision from the Court of Justice of the European Union. A representative for the brand did not immediately respond to a request for comment.
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