In the matter of Christian Louboutin SAS v. Abubaker and Ors. [CS (Comm.) No. 890/2018], the Plaintiff sought a permanent injunction against the Defendants’ sale of red-soled shoes (notwithstanding the Defendant’s use also of its own trademark VERONICA for the shoes). The Plaintiff relied on its registered trademark for the colour red for the soles of women’s shoes. The suit as filed was taken up on the question of admission.
The Court examined (vide its May 25, 2018 decision) whether the suit plaint set out a presentable cause of action that could be tried: “…taking the contents of the plaint as correct, whether there exists a legal entitlement in the plaintiff to claim the reliefs as prayed in the suit.”
The Court observed that it is clear from the definitions of ‘mark’ and ‘trademark’ in the Trade Marks Act, 1999 (each of which uses the expression ‘a combination of colours’), that a single colour does not qualify as either.
The Plaintiff argued that a single colour is capable of acquiring distinctiveness through use, and once distinctiveness is acquired the single colour can become a valid trademark. The Court, however, rejected this argument, holding that “…this argument ignores the first basic sine qua non of a thing becoming a trademark i.e. of whatever is sought to be claimed as a trademark must first also be a mark.”
The Court accordingly dismissed the suit at the threshold itself, holding that even if the facts as set out in the plaint were to be taken as entirely true, there is simply no cause of action presented thereby that can possibly be taken up for trial.