{"id":530,"date":"2020-12-18T18:09:59","date_gmt":"2020-12-18T18:09:59","guid":{"rendered":"http:\/\/takhte.in\/VoiceofViews\/?p=530"},"modified":"2021-01-17T18:48:06","modified_gmt":"2021-01-17T18:48:06","slug":"tread-lightly-single-colour-and-trademarks","status":"publish","type":"post","link":"https:\/\/takhte.in\/VoiceofViews\/tread-lightly-single-colour-and-trademarks\/","title":{"rendered":"Tread Lightly: Single Colour and Trademarks"},"content":{"rendered":"\n

Mahathi U
The National University of Advanced Legal Studies, Kochi, Kerala<\/em><\/p>\n\n\n\n

That brand behemoths have systematically swallowed up every square footage of high streets is hardly news. Exuberant hues are used judiciously by these brands to draw the consumer towards the product. When such a product sells, fashion brands seek protection from the law for many aspects of clothing and accessory designs, including colours, which can serve as source-identifiers or marks and Trademark law is generally the primary protection sought by fashion brands and designers alike.<\/p>\n\n\n\n

This article, for the most part analyses the existing jurisprudence on the single colour mark and the rest emphasizes the need for Indian law to recognize a single colour as a mark, with specific reference to the Louboutin cases.<\/p>\n\n\n\n

Fetching sky-high prices and featuring sky-high heels, Louboutin\u2019s red-soled stilettos, are considered to be an utterly iconic symbol of femininity. These fiery red outsoles, have been the subject of many litigations. The first one is Christian Louboutin SA v Yves Saint Laurent America[1]<\/a>, with Louboutin suing for trademark protection of his red lacquered sole. In India, the case for red soles[2]<\/a> has shaken up the judiciary. The High Court of Delhi appears to have slid into a quagmire of sorts because of the three Louboutin cases[3]<\/a>, and the status of the single colour trademark remains uncertain.<\/p>\n\n\n\n

Single Colour Mark Jurisprudence:<\/p>\n\n\n\n

Drawing a connection between a colour and a brand story, requires more than just ink, pixels, and a lawyer. In Cadbury\u2019s case, the value of owning the colour \u2018purple\u2019 would be attached only when it symbolizes a broader brand experience that can delight consumers everywhere.[4]<\/a> Tiffany\u2019s on the other hand, has been using the sought-after \u2018robin blue\u2019 since 1845, but trademarked it only in 1998, all the while managing to retain its brand equity.[5]<\/a> Both these establishments, in an effort to exclude other brands from deriving any benefit accrued from their unique mark, have sought protection from trademark law.<\/p>\n\n\n\n

Under U.S. Trademark Law, the protection awarded to single colours does not extend to colours per se, implying that protection is afforded only to the coloration of a specific product, shape or design.[6]<\/a> The Pantone Matching System is utilised by the American Judiciary in order to define the scope of trademark protection of a colour so that there exists a standard, objective benchmark that ought to be complied with.[7]<\/a> The logic behind the confines is that if a colour yields a utilitarian advantage, protecting it as a trademark would unjustly restrict competitors\u2019 ability to compete in the industry.[8]<\/a><\/p>\n\n\n\n

Contrarily, the Trademarks Act[9]<\/a> in India does not expressly provide for the protection of single colour trademarks. But the practice guidelines[10]<\/a> that are drafted by the Trade Mark Office suggest that single colours will be protected on strict evidence of \u201cacquired distinctiveness\u201d and that registration of a single colour will be allowed only to the extent of the colour shade.<\/p>\n\n\n\n

This issue had also come up for consideration at the European Court of Justice, which disregarded the recommendation of the Advocate-General and declared the accepted position under European Trademark Law. The provisions of TRIPS (Trade Related Aspects of Intellectual Property Rights) were analysed and applied to the case at hand.[11]<\/a> It stated that seeking to protect the application of a colour to a specific part of the shoe was admissible. [12]<\/a><\/p>\n\n\n\n

The single colour mark regime has, ergo, been subjected to interpretation by various legal systems and their views remain divided.<\/p>\n\n\n\n

The Rule of Aesthetic Functionality and the Flawed Colour Depletion Theory:<\/strong><\/p>\n\n\n\n

The Court of Appeal in Christian Louboutin SA v. Yves Saint Laurent America[13]<\/a>, addressed the doctrine of \u201caesthetic functionality\u201d as considered by the District Court[14]<\/a>. The Hon\u2019ble Court also decided on whether the single colour mark was necessarily \u2018functional\u2019.[15]<\/a> The \u201cfunctionality\u201d of a mark is demonstrated by, inter alia, showing that the mark has a traditional or aesthetic functionality.[16]<\/a> The common denominator in cases where the functionality doctrine is applied, is whether the element in question has helped in the commercial success of the product.<\/p>\n\n\n\n

In order to justify the employment of this rule, the District Court stated that \u201cthere is something unique about the fashion world that militates against extending trademark protection to a single colour.\u201d[17]<\/a> It was in this landscape that the suit was decided against Louboutin. This rationale, however, is faulty for the following reasons.<\/p>\n\n\n\n

Firstly, the argument is very general, vague, and the phrase \u2018something unique\u2019 has not been elaborated upon. Secondly, the defense of functionality does not guarantee an inordinate range for a competitor\u2019s creative outlet, but only the wherewithal to fairly compete within a given market. Competition considerations must not in any manner outweigh intellectual property rights; they must only step in when necessary.<\/p>\n\n\n\n

The Court of Appeal clarified its stance on this issue, denouncing the decision of the District Court. It held that \u201cthe District Court\u2019s conclusion that a single colour can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of \u2018aesthetic functionality\u2019 and was therefore error\u201d.[18]<\/a><\/p>\n\n\n\n

The High Court of Delhi too, in the 2nd Louboutin case[19]<\/a>, seems to have erred in its interpretation of this rule. It has cited the U.S. Court of Appeal as having \u201ccategorically observed that where a trademark serves a significant function or the trademark is such that there is a competitive need for the colours to remain available in the industry\u201d, then there remains special reasons which oppose the use of colour alone as a trademark.[20]<\/a> It has clearly backed the wrong horse by attaching functionality to colour in the case at hand.<\/p>\n\n\n\n

The competition versus trademark protection problem in the market is further convoluted by the argument of limited availability of colours, or as it is referred to in the United States, the colour depletion theory.[21]<\/a><\/p>\n\n\n\n

This theory forms the basis for the Hon\u2019ble Court\u2019s ground for dismissing Louboutin\u2019s plea[22]<\/a> to recognize his red-sole as a mark, is one that bars the use of colour as a trademark. Its premise which is quite flawed, is that the number of colours in the visible spectrum is finite and therefore, limited. It suggests that if a manufacturer is allowed to appropriate a colour for its goods, and in doing so, is followed by others, at a later point in time, manufacturers will have little to no colours for future utilization.<\/p>\n\n\n\n

In the Owens-Corning case, the Court of Appeals for the Federal Circuit held that, based on a broad revision of trademark law, \u201ccourts have declined to perpetuate the colour depletion theory\u2019s prohibition\u201d on infringement protection. [23]<\/a> This theory has to be rejected because it relies on an infrequent problem in order to legitimize a blanket prohibition.<\/p>\n\n\n\n

The Trademark Act, 1999 only allows for a combination of colours to be agnized as a mark under Section 2 (zb)[24]<\/a>. The object of this provision is to enable the Indian system to prevent the exhaustion of colours. But, in not appending a \u2018single colour\u2019 to the section which defines mark, the legislature is denying the right that every brand has, to protect its distinctive identity. This theory effectively denies protection of a colour even after it has achieved secondary meaning resulting in the mischaracterization of the mark as being of monopolising nature.[25]<\/a><\/p>\n\n\n\n

As amply substantiated above, the rule of aesthetic functionality and the colour depletion theory stand inapplicable in this case, as is.<\/p>\n\n\n\n

The Indian Position: What is to be done?<\/strong><\/p>\n\n\n\n

The single colour trademark, forms a grey area in Indian Trademark Law. It purportedly lacks distinctiveness which a combination of colours has. Such an argument is liable to be qualified as unsound and fallacious for reasons which are explained in the following paragraphs.<\/p>\n\n\n\n

The latest judgment[26]<\/a> in the Delhi High Court was decided in Louboutin\u2019s favour. Nevertheless, the judiciary\u2019s only reasoning was that this trademark is protected everywhere and that it has the requisite distinctiveness.<\/p>\n\n\n\n

The distorted rationalization in the analysis of the regime is this. Both the Legislature and the Judiciary have developed a misconstrued notion that there might befall a situation where trademarks are to be awarded to colours per se but that is never the case and never will be. The per se rule would essentially deny trademark protection to any application of a single colour on an apparel. Even if the Judiciary wanted to read the per se rule of functionality into this issue, such a rule would be neither appropriate nor necessary here, because this single colour which has been the object of continuous deliberation, will inevitably have to be deployed on a particular product, or serve as an identifier for a specific shape or design. So, undeniably, it cannot be a trademark by and of itself. The secondary meaning or the plus factor is already inherent in the case of a single colour. <\/p>\n\n\n\n

Moreover, competition in this billion-dollar industry is not possible without the protection of intellectual property in general and the single colour mark in the instant case. A definitive and acceptable system of protection inspires traders to flesh out new brands and play an active role in business development, thereby helping to maintain a fair competitive market.<\/p>\n\n\n\n

The legislation therefore, has to be revamped in such a manner that the definition for mark is inclusive of a single colour. For fear of exhaustion of single colours from the ostensibly limited palette, the judiciary may be satiated by utilising the \u2018functionality\u2019 doctrine in the appropriate circumstances, thereby successfully aiding the legislature in preventing unfair competition in the free market. <\/p>\n\n\n\n

By extending trademark protection to the coloration of an item of apparel, there is a justified competitive advantage given to a trader. This in turn will serve as a brand-identifier and, brand identity, is a proven neurological mnemonic that influences our thought process. So, dismiss the role of a single colour at your peril.<\/p>\n\n\n\n

\n\n\n\n

[1]<\/a> Christian Louboutin S.A. v Yves Saint Laurent Am., Inc.,<\/em> 696 F. 3d 206 (2d Cir. 2012).<\/p>\n\n\n\n

[2]<\/a> Specifically, the registration for the Louboutin mark states: \u201cThe colour red is claimed as a feature of the mark.  The mark consists of a lacquered red sole on footwear.\u201d<\/p>\n\n\n\n

[3]<\/a> See<\/em>, Christian Louboutin SAS v. Ashish Bansal & Anr.<\/em> CS (COMM) 503\/2016, Christian Louboutin SAS v Abubaker <\/em>CS (COMM) No 890\/2018 and Christian Louboutin SAS v. Pawan Kumar & Ors.<\/em> CS(COMM) 714\/2016.<\/p>\n\n\n\n

[4]<\/a>  Soci\u00e9t\u00e9 Des Produits Nestl\u00e9 S.A. v. Cadbury UK Ltd<\/em> [2012] EWHC 2637. <\/p>\n\n\n\n

[5]<\/a> See<\/em>, Brief for Tiffany (NJ) LLC and Tiffany and Company as Amici Curiae, Christian Louboutin SA v Yves Saint Laurent America, Inc et al., No 11-cv-3303, (2d. Cir. Oct. 2011), ECF. No. 63. <\/p>\n\n\n\n

[6]<\/a> Lanham (Trademark) Act, 15 U.S.C. \u00a7 1051-1141n (2012).<\/p>\n\n\n\n

[7]<\/a> See,<\/em> Reanna L. Kuitse, \u201cChristian Louboutin\u2019s \u201cRed Sole Mark\u201d Saved To Remain Louboutin\u2019s Footmark In High Fashion, For Now . . .\u201d (2013) 46 Indiana Law Review 241.<\/p>\n\n\n\n

See also,<\/em> D.E. Gorman, \u201cProtecting Single Colour Trademarks in Fashion After Louboutin\u201d, (2012) 30 Cardozo Arts and Ent. L.J 122.<\/p>\n\n\n\n

[8]<\/a> See<\/em>, Qualitex Co. v. Jacobson Prods. Co.,<\/em> 514 U.S. 159 (1995).<\/p>\n\n\n\n

[9]<\/a> The Trademarks Act, (1999).<\/p>\n\n\n\n

[10]<\/a> Manual of Trademarks Practice and Procedure, 2015.<\/p>\n\n\n\n

[11]<\/a> Agreement on Trade-Related Aspects of Intellectual Property Rights (1994). Available at: http:\/\/www.wto.org\/english\/docs_e\/legal_e\/27-trips.pdf<\/a> (last visited on July 26th<\/sup>, 2012).<\/p>\n\n\n\n

[12]<\/a> Christian Louboutin SAS v. Van Haren Schoenen BV<\/em>, Case C\u2011163\/16 12th <\/sup>June 2018.<\/p>\n\n\n\n

[13]<\/a> Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc.<\/em>, 696 F. 3d 206 (2d Cir. 2012).<\/p>\n\n\n\n

[14]<\/a> Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc.,<\/em> 778 F.Supp.2d 447 (2011).<\/p>\n\n\n\n

[15]<\/a> Louboutin<\/em>, 696 F. 3d 220 (2d Cir. 2012).<\/p>\n\n\n\n

[16]<\/a> New Colt Holding Corp. v. RJG Holdings of Fla., Inc.<\/em>, 312 F. Supp. 2d 195, 212 (D. Conn. 2004).<\/p>\n\n\n\n

[17]<\/a>Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc.,<\/em> 778 F.Supp.2d 451 (2011).<\/p>\n\n\n\n

[18]<\/a> Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc.<\/em>, 696 F. 3d 206 (2d Cir. 2012).<\/p>\n\n\n\n

[19]<\/a> Christian Louboutin SAS v Abubaker <\/em>CS (COMM) No 890\/2018.<\/p>\n\n\n\n

[20]<\/a> Louboutin<\/em>, 696 F. 3d 238 (2d Cir. 2012).<\/p>\n\n\n\n

[21]<\/a> Qualitex Co. v. Jacobson Prods. Co.,<\/em> 514 U.S. 159 (1995).<\/p>\n\n\n\n

[22]<\/a> Christian Louboutin SAS v Abubaker <\/em>CS (COMM) No 890\/2018.<\/p>\n\n\n\n

[23]<\/a> In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).<\/p>\n\n\n\n

[24]<\/a> The Trademarks Act, (1999) \u00a7 2(zb).<\/p>\n\n\n\n

[25]<\/a> Brief for International Trademark Association (INTA) as Amici Curiae, at p.10, Christian Louboutin SA v Yves Saint Laurent America, Inc et al., No. 11-cv-3303 (2d. Cir. Nov. 2011), ECF. No. 82.<\/p>\n\n\n\n

[26]<\/a> Christian Louboutin SAS v. Ashish Bansal & Anr.<\/em> CS (COMM) 503\/2016.<\/p>\n","protected":false},"excerpt":{"rendered":"

Mahathi UThe National University of Advanced Legal Studies, Kochi, Kerala That brand behemoths have systematically swallowed up every square footage of high streets is hardly news. Exuberant hues are used judiciously by these brands to draw the consumer towards the product. When such a product sells, fashion brands seek protection from the law for many […]<\/p>\n","protected":false},"author":1,"featured_media":527,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"footnotes":""},"categories":[176],"tags":[192,214,215,191],"class_list":["post-530","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-legal-talks","tag-free-online-publishing-platform","tag-mahathi","tag-trademarks","tag-vov-writer"],"_links":{"self":[{"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/posts\/530","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/comments?post=530"}],"version-history":[{"count":1,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/posts\/530\/revisions"}],"predecessor-version":[{"id":531,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/posts\/530\/revisions\/531"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/media\/527"}],"wp:attachment":[{"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/media?parent=530"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/categories?post=530"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/takhte.in\/VoiceofViews\/wp-json\/wp\/v2\/tags?post=530"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}