Tuesday 15 May 2018

Louboutin’s Red Sole and Dispute Over its Protection in European Union

SOURCE: ipindia.nic.in (Indian Trademark Registration Number: 1922048)
Color has always been one of the most important aspect of fashion brands. In fashion industry color is known to impart a meaning to the design. It is many times the color that gives the unique identity to the fashion products. Christian Louboutin’s ‘Red Sole Shoes’ are not just shoes but a fashion statement for women around the globe. According to Louboutin, who has painted the soles of his shoes red since 1992, ‘red implies sensuality -- and serves as a crafty, subtle branding tool. I selected the color because it is engaging, flirtatious, memorable and the color of passion.’[1]
The question of acquiring rights over a color is a fascinating battleground between courts and international brands, with different squads playing with different rules. The recent one to join the league is Christian Louboutin Red Sole case in the European Court of Justice (ECJ). The center of the controversial Christian Louboutin Red Sole Case in the European Court of Justice (ECJ) revolves around one important question, which is, ‘Can a designer be allowed to have exclusive rights over a color?’. Also, the color ‘Red’ in question here is one of the most popularly chosen colors in the fashion world. ‘Red’ is the color of fire and blood, so it is associated with energy, war, danger, strength, power, determination as well as passion, desire and love. Red as a colour is used in fashion to strongly bring images to the foreground. It is used as an accent color to stimulate people to make quick decisions.[2]
The European Union (EU) Court’s Advocate General Maciej Szpunar in his opinion specified that the trademark of Christian Louboutin, Pantone18 1663TP, was a combination of color and shape, and therefore, could be refused or declared invalid on the grounds of EU trademark law. He also noted that his analysis relates exclusively to the intrinsic value of the shape and take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.
Since the time Louboutin grabbed his assistants red nail polish and applied it to the outsole of a shoe because he disliked the design a quarter century ago, red sole became his signature design for all the shoes manufactured under his mark.
The primary goal of trademark law is to protect consumers from being confused about the ‘origin and quality of the product’ and giving a unique identity to the goods. Color Trademarks is a point of discussion in different countries, each one dealing with the issue differently. In the marketplace today, colors are playing a very important role in the world of fashion. Sometimes the distinctive feature in a design is conferred by color. Article 15 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) redefined the definition of trademark law to encompass ‘any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings’. This allowed a non-conventional trademark i.e. Color category to be given trademark protection.
Therefore, what is tested while giving exclusive rights in cases like these is how closely related is the specific color to the design? And whether the relevant consumers are capable of instantly recognizing the color being uniquely associated with the design or not? Details of different jurisdictions dealing with the issue of Color Trademark is discussed below:
  1. UNITED STATES OF AMERICA (USA): In the case of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) the US Supreme Court held that colors alone can be registered as trademark. The trademark owner must show that the trademark color has acquired substantial distinctiveness, and the color indicates source of the goods to which it is applied. Tiffany Blue is one of the most popular examples of a color trademark.
Christian Louboutin has a valid trademark protection over its red sole in USA. However, in 2016 case of Christian Louboutin v. Yves Saint Laurent, the Second Circuit Court of Appeals specified that Louboutin’s trademark is for those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe.[3] 
  1. Switzerland: In Switzerland, abstract colors may be registered as trademarks, particularly in case of acquired distinctiveness through use. However, depending on the goods at issue, some colors—such as primary colors—strictly belong to the public domain and can never acquire distinctiveness through use given their absolute indispensability to the public for use in commerce.
The Swiss Federal Institute of Intellectual Property rejected Louboutin's trademark's extension to Switzerland in 2011. In February 2017, Swiss courts turned down a final appeal by Louboutin to trademark its red-soled heels there, finding that the red soles are merely an aesthetic element. The courts further noted that the fact that the brand has won the battle for trademark status in other markets including China, Australia and Russia did not mean the shoes should enjoy the same status in Switzerland.[4]
  1. CHINA: In accordance with the Trademark Law of the People’s Republic of China, effective May 1, 2014, any visually perceptible sign, including color combinations, capable of distinguishing the goods of one party from those of others is eligible for registration as a trademark. Hence, color combination marks are registrable as trademarks and service marks in China.[5]
  2. AUSTRALIA: In Australia, a specific shade of color, or combination of colors, can be registered as a trade mark. However, the process of registration can be difficult and requires significant evidence of use, particularly for single colors. Cadbury has successfully trademarked Pantone 2685C ‘Cadbury purple’.
Louboutin filed a trademark application for its red soles, specifically Pantone No 18.1663TP applied to the sole of a shoe. The application was accepted on the provision of evidence of distinctiveness/secondary meaning.[6]
  1. India: The definition of a mark under the Trademark Act includes a particular color or  ‘combination of colors’ and therefore it can be construed that colors can be protected in relation to goods and services under the Trademark Act. Section 10 of the Act states that a trademark can be limited to a particular color or combinations of colors. However, such limitation as to color will only be allowed on determining the distinctive character of the mark.
In India, single colors or shades of colors have attracted attention of the business community in recent times. The Trademark Act, 1999 does not specifically provide for the registration of a single color, although it does not expressly exclude the notion. Prima facie in practice, a color combination stands a better chance of registration. A single-color faces certain obvious hurdles in order to get itself registered. Reason being a single color is never inherently distinctive. However, various proprietors have filed a trademark application for single color and few such proprietors have obtained registration over the same. The criteria for getting registration remains the same i.e. they can be registered when they become distinctive by extensive use and acquiring secondary meaning. Details of few single color registered trademarks as per the records of the trademark registry is given below:
Sr. no.

October 19, 2005

June 19, 2006
Louboutin holds a valid trademark in India. In December 2017 Louboutin was awarded INR 10,00,000 (USD 15380 approx.) in damages and a permanent injunction against two shoe dealers — Kamal Family Footwear and Adra Steps — for infringing on the trademark in India. Also, Louboutin’s ‘red sole’ shoes were declared as a well-known trademark by the Delhi High Court in India.
  1. Japan: From 2015, color marks became registerable in Japan. On April 25, 2014, an amendment to the Trademark Act of Japan was enacted, introducing the protection of non-traditional marks. Under the amended Trademark Act, “any character(s), figure(s), sign(s), three-dimensional shape(s) or color(s), or any combination thereof, sound(s), or other(s) specified by a Cabinet Order, which is perceptible with human sense” will be protected as a trademark. Under this new definition, a “color per se” mark and a combination of colors without delineated contours gets protected.[7]
  2. EUROPEAN UNION (EU): Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993, relevantly states that any Community Trademark may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Libertel Groep v Benelux Merkenbureau (case C-104/01) May 6, 2003, the ECJ held that graphical representation preferably means by images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. This definition generally encompasses color marks, and therefore an applicant for a CTM or a national trademark in the EC may define their color trademark using an international color code such as RAL or Pantone. In most cases, a color trademark will be registered only after an enhanced distinctiveness through use in the EC has been proved. Color combination marks have been recognized in several General Court judgments, including BCS SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), [2009] ECR II-04047 and CNH Global NV v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), [2010] ECR II-05153.
In EU, Christian Louboutin registered his first trademark in 2000 in France. He filed for EU-wide and international protection immediately. The procedure with the European Union Intellectual Property Office (EUIPO) did not run as smoothly. Louboutin applied on 29 January 2010, but on 20 September 2010 the application was rejected by EUIPO´s examiner for the lack of distinctiveness. Again, in 2011. The Board of Appeal did not agree with Examination Office´s decision and registered the trademark (EUTM no: 008845539) on 16 June 2011. But now the registration is again under threat of getting cancelled following the lawsuit with Dutch high-street chain Van Haren.[8]
Considering that the European Union (EU) court’s Advocate General Maciej Szpunar opinion is not binding, it would be interesting to see how European Court of Justice shapes up the final decision.
A table containing the details of the registered trademark in each of the above-mentioned jurisdiction can be found below –
S. NO.


August 29, 2006


June 1, 2012


April 1, 2015
LIVE / APPLICATION / Under Examination


European Union
January 29, 2010


November 30, 2006
Recordal of license finished


February 15, 2010
[Source: WIPO’s Global Brand Database]
Lastly, a gist of all the information stated above is summarized in the table below for readers convenience.
United States of America (Usa)
Recordal of license finished
Under Examination
European Union (Eu)

The European Court of Justice's (ECJ) verdict in this case would have a wider impact. It would be interesting to see whether the ECJ would agree with Advocate General Szpunar’s Opinion or would go against it? Keep an eye on this space for more updates on the case.

India: Grace Sports injuncted from using the mark ‘IPL’

Board of Control for Cricket in India (hereinafter referred to as ‘the Plaintiff’) is the apex governing body for cricket in India. Grace India Sports Private Limited (hereinafter referred to as ‘the defendant’) claims to be organizing cricket talent hunts/camps and cricket tournaments. It was alleged by the Plaintiff that the services of the Defendant are identical/similar to those provided by the Plaintiff.
The notice of motion was taken out in an infringement and passing off suit filed by the Plaintiff. In the order dated January 16, 2018, passed by the Bombay High Court, reference was made to the order dated December 14, 2017, which was passed by the Learned Single Judge, S.C. Gupte, upon the ad-interim application also dated December 14, 2017 instituted by the Plaintiff against the Defendant, wherein the Defendant, who was absent at the said hearing was given one more opportunity to show cause in the matter. The order further stated that in case the Defendant refused to accept service or failed to appear at the next hearing, the matter would be heard ex parte, and appropriate ad-interim orders would be passed.

Plaintiff’s Contentions

The timeline of the submissions, regarding the events related to the suit of the Plaintiff are as follows:
Plaintiff designed and adopted logos comprising a batsman swinging a bat as if hitting a ball along with the expressions “IPL”, “Indian Premier League”, and “Twenty 20”.
Plaintiff has since been using the trademarks “IPL”, “Indian Premier League”, “IPLT20” and “IPLTwenty20” in relation to a unique concept cricket tournament and goods and services associated therewith.
The abovementioned logos as a whole and in their entirety are unique, novel, catchy and attractive.
Plaintiff has also duly registered the trademarks “IPL”, “Indian Premier League”, “Indian Premier League Twenty 20” and “IPL Twenty 20” in classes 09, 16, 18, 22, 25, 28, 32, 35, 37, 39, 41 and 42.
Plaintiff hosted the first Indian Premier League Twenty20 tournament, popularly known as “IPLT20” and/or “IPL” featuring cricket matches with 20 overs a side.
However, the Plaintiff had commenced promoting and publicising the said event much before, through wide and extensive advertising, in India as well as abroad. Plaintiff spent several crores of rupees in the process.
By the time the tournament started in India, the aforesaid trademarks had already gained popularity as indicating the cricket matches organized by the Plaintiff and are till date associated exclusively with the Plaintiff and its good and services.
Plaintiff is also operating a domain name/website at www.iplt20.com.
August 24, 2016
Defendant sent a letter to the Plaintiff communicating its intention to conduct a cricket tournament for junior players under the name/mark “Indian Junior Players League Twenty 20”/ “IJPL T20”.
September 15, 2016
Article in Times of India titled ‘Gambhir Unveils Indian Junior Players League’ wherein it was inter-alia reported that ‘Star batsman Gautam Gambhir unveiled the Indian Junior Players League Twenty 20 (IJPL T20), a talent hunt for boys aged 14 to 18 years’. The said article confirmed that Gautam Gambhir, a member of the Indian Cricket Team is associated with the Defendant and its proposed junior cricket league.
October, 2016
Plaintiff came to know about the Defendant’s domain names: www.ijplt20.com and www.juniorsipl.com.
November 11, 2016
Plaintiff issued cease and desist notice through its advocates upon the Defendant, inter alia calling upon it to cease use of the name/mark “IJPL” and the aforementioned domain names.
December 01, 2016
Plaintiff learned of the Defendant’s continuing activities vide newspaper article in Dainik Bhaskar (Jaipur Edition).
December 08, 2016
Plaintiff issued letter to all subordinate State Associations informing them about the IJPL tournament organized by the Defendant and further informing them that the said tournament has not been approved or authorized by the Plaintiff.
December 09, 2016
The Saurashtra Cricket Association sent a copy of e-mail that it had received from the Defendant inviting young students to participate in the IJPL. The e-mail stated that the selection will be done by Ranji Trophy players and coaches, and that the event will culminate into a National Tournament of day-night matches which will be held in Mumbai.
December 13, 2016
Correspondence between the Defendant and Plaintiff wherein the Defendant refuted the allegations put forward in the Plaintiff’s cease and desist notice, and the Plaintiff responded by saying that as the Plaintiff is the governing body for cricket in India, all tournaments need prior approval of the Plaintiff; that no such approval had been given to the tournament being organized by the Defendant; and that players participating in non-approved tournaments cannot be a part of the Plaintiff’s future activities.
December 14, 2016
Defendant sought a meeting with the Plaintiff to resolve the issue, however, no such meeting was held and the Plaintiff did not give any approval for the tournament.
August, 2017
Plaintiff learned that the Defendant was planning to hold a cricket tournament under the name/mark IJPL T20 in Dubai from September 19- September 30, 2017, whereas it had so far (since December 2016) been under the bona fide belief that the Defendant had indeed ceased use of the name/mark “IJPL” in compliance with its demands.
Plaintiff additionally learned that Defendant was no longer using the domain www.juniorsipl.com, however was using the domains www.ijplt20.com and www.ijplth.com.
September 09, 2017
Plaintiff published a media advisory on its website against IJPL and its domain names.
September 10, 2017
Plaintiff sent an email to all its affiliate State cricket units informing that IJPL did not have due authorization from it and to dissociate from it.
October 11, 2017
Plaintiff sent a second cease and desist notice to the Defendant.
Thereafter, the Plaintiff learned upon visiting the Defendant’s website that it has now started the registration process for IJPL T20 Season 2, thereby initiating the present suit.
January 3 and 4, 2018
The aforesaid order dated January 16, 2018 was duly served upon the Defendant vide email and courier respectively.
January 12 and 15, 2018
Notice of the present ad-interim application proceedings was further served on the Defendant vide emails.
Based on the above sequence of events, the Plaintiff contended that:
  • The Defendants are using the impugned trade mark IJPL and IJPL T20 and the impugned domain names www.ijplt20.com, www.juniorsipl.com and www.ijplth.com which are visually, structurally, phonetically, aurally, closely and deceptively similar to the Plaintiff’s trademarks.
  • The Plaintiff’s mark has earned the status of well-known mark in India.
  • There is real and actual confusion in the minds of consumer between the Plaintiff’s trademark and Defendants mark.
  • The Plaintiff’s are likely to suffer irreparable injury due to infringement of its mark by the Defendant.

Court’s Analysis

  • Since the Defendant did not appear on the date of the hearing, and therefore, as per the previous order passed by the Learned Single Judge, Hon’ble Justice S.J. Kathawalla., heard the Plaintiff’s submissions and passed an ex parte order upon the Defendant.
  • Hon’ble Justice Kathawalla., upon due consideration of the facts and circumstances of the case and evidence as tendered by the Plaintiff in the matter, was pleased to pass order in favour of the Plaintiff.
  • According to the order, dated January 16, 2018, strong prima facie case was made out by the Plaintiff that the rival trademarks of the Defendant were found to be deceptively similar and for identical/similar services/activities.
  • In so far as passing off was concerned, the Judge also found real and actual confusion had already taken place as several news articles had referred to the Defendant’s tournament as “Youth IPL” and “Indian Junior Premier League”.
  • Therefore, the Defendant was permanently injuncted from infringing the Plaintiff’s trademarks “IPL” and “IPLTwenty20” by using “IJPL” or “IJPL T20” in respect of its activities/services and also the impugned domain names www.ijplt20.com, www.juniorsipl.com and www.ijplth.com.
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