Until very recently, Position Marks was an unfamiliar concept in Indian trademark law, having its roots only in international Trademark law. As per the European Union Trademark Implementing Regulation ('EUTMIR'), followed by the Office for Harmonisation in the Internal Market ('OHIM'), which is the trademark and designs registry for the internal market of the European Union, 'Position Marks are trademarks consisting of the specific way in which the mark is placed or affixed on the goods'.^[1]

Position marks signify a departure from conventional trademarks. A position mark may best be illustrated simply by the application of a specific colour or a combination of colours or a shape in a particular manner on a product and nothing more.

However, in India, the law on the subject i.e. the Trademarks Act, 1999 does not define position marks per se. Its meaning, is therefore to be derived as a constructive interpretation from the definitions provided in the Act, which are as follows:

"2. Definitions and interpretation.—(1) In this Act, unless the context otherwise requires,—

xxx xxx xxx

(m) "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;

xxx xxx xxx

(zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;…"

The definition of a 'mark' used in Section 2(1)(m) of the Trademarks Act, is inclusive and encompasses almost all modes of depiction of the mark. Insofar as colour is concerned, the expression used however is '…combination of colours…'.

Colour marks, like any other trademark, can act as source identifiers, helping manufacturers to distinguish their goods and services from those of others. One of the most famous examples is the robin egg blue colour which is worldwide recognized and associated with luxury brand 'Tiffany & Co'. Another prominent example of colour being a position mark is the red colour used in the soles of the shoes designed by luxury designer 'Christian Louboutin'.

It is recognised across various jurisdictions around the world that a colour, either standing alone or in combination with another colour, can function as a trademark and is registerable. The Supreme Court of the United States in Qualitex Co v Jacobson Products Co Inc^[2], gave due recognition and protection to a single-colour trademark i.e the green gold colour mark of Qualitex, which was used by it for its dry cleaning press pads.

Green Gold Color of the Qualitex Dry Cleaning Press Pads

However, the question that arises is whether this evolved trademark paradigm has permeated Indian trademark law and whether a singular colour, used as a position mark, can be afforded protection in India?

Can a singular colour be treated as a mark to invite the privilege of trademark protection in Indian trademark law?

Indian courts have granted protection against infringement to a combination of colours, used as a mark for example the Red/White colour combination used by Colgate for its toothpaste and the Green/Yellow colour combination used by John Deere in respect of its tractors.

Green/Yellow Colour combination used the John Deere Tractors

However does a singular colour, by its own nature and by virtue of it's positioning, has such inherent or acquired distinctiveness that crosses the threshold to be called a 'mark' and invite trademark protection in India?

The matter ought to have been the subject of judicial dicta on the facts of the Louboutin case, however the same was never really decided on this aspect, and it was a lost opportunity of sorts.

To the luxury shopper, nay even the average shopper, Christian Louboutin is not a name which requires introduction. The French shoe manufacturer is reknowned world-wide and has a formidable reputation in fashion. A unique characteristic of almost every Louboutin high-heel shoe is the pantone red color on its underbody. This is a position mark and from a distance acts as an identifier that the wearer is wearing a Louboutin shoe.

In 2017, the Delhi High Court had occasion to consider a suit filed by the shoemaker seeking injunction against certain shopkeepers from selling footwear bearing red soles, which was a registered trademark of the plaintiff. Vide a judgment in Christian Louboutin SAS v Pawan Kumar,^[3] the High Court decreed the suit in favour of the plaintiff with a finding that, based on the material on record, the plaintiff's red sole trademark had acquired 'well-known character'. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. However, the High Court did not go into the question whether a singular colour can be a 'mark' within the meaning of Section 2(1)(m) of the Act.

When the question of the Louboutin red sole again came up before the Delhi High Court in 2018, in Christian Louboutin SAS v. Abubaker^[4], another suit for injunction, the learned Single Judge disagreed with the decision in the above case and held that a single colour cannot be a mark, and therefore cannot be a trademark. The court held as follows:

8. (ii) …Combination of colours is sine qua non, and meaning thereby that quite obviously one single colour, as contra-distinguished from combination of colours, cannot be a mark falling in the definition of 'mark'. Hence, a single colour not being a mark, the single colour cannot be claimed as a trademark. Once the legislature has intentionally and deliberately used the expression combination of colours, and it has not used the word colour in singular, it is clear that a single colour cannot be a mark for being elevated to the status of a trademark. In the present case, there is no dispute that we are only dealing with a single colour viz the red colour shade which the plaintiff is using in the soles of its goods being ladies footwear. I therefore hold that by the very language of the definition of mark contained in the Trade Marks Act, a single colour cannot under any circumstances be given the benefit for being used as an exclusively owned trademark of a manufacturer/seller etc.

However, this decision was carried by Louboutin in appeal before the Division Bench of the Delhi High Court, wherein by a detailed decision in Christian Louboutin SAS v. Abubaker (DB)^[5], the bench set aside the aforesaid decision on another procedural aspect, remanding the matter back to the Single Judge for deciding the controversy on merits afresh.

The matter is stated to be pending adjudication and therefore the question of protection to a singular colour is still open.

It is interesting to note that Louboutin's very first trade mark application, in the year 2000, was a national trademarks application in France for a combined, semi figurative trademark consisting of a picture of red sole shoes in class 25, bearing the words 'Christian Louboutin Vero Cuiro made in Italy 38' without mentioning a Pantone colour code but with the added description 'semelle de chaussure de couleur rouge' (which translates to - shoe sole in the colour red).

Thereafter Louboutin has successfully sued for infringement of its red sole shoes, being a singular colour mark, in several jurisdictions in Europe as well as the United States.

The definition ascribed to a 'mark' in Section 2(1)(m) is an inclusive definition and not an exhaustive definition. Expounding on the principles of interpretation of statutes, the Supreme Court in Ramanlal Bhailal Patel v. State of Gujarat, ^[6] held that "…Where the definition is an inclusive definition, the use of the word "includes" indicates an intention to enlarge the meaning of the word used in the statute…." (para 23).

Therefore, it appears that the surmise of the learned Single Judge in Abubaker's case was wrong to the effect that the statute by virtue of Section 2(1)(m) excludes a mark having a singular colour.

As per Section 2(1)(zb), a 'trademark', means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.

If a singular colour rises to the show inherit substantial value or acquired substantial value, there is no reason why it not be treated as a mark, and a trademark. It must be noted that in case of a position mark, a lack of inherent distinctive character can be overcome by proving acquired distinctiveness.

Where shape or other characteristics such as colour, coupled with a unique placement, have, with the passage of time, started to add substantial value to the products which in turn has led to fame and gained recognition for the product, it would seem unfair to deny trademark protection.

Conslusion

It is welcoming that the changing global paradigm of substantive value addition by position marks has been adopted by the courts in India. However, by creating an unwarranted distinction between singular colour marks and combination of colours the entire intent of the trademark regime will be given a go-by. It is hoped that courts will adopt a more progressive and pragmatic approach in their decisions to enable India to embrace the evolving trademark paradigm.

[Rushab Aggarwal is an advocate at the Supreme Court of India and the Delhi High Court. Mehak Bhambri is a final year student of law at Amity Law School, Delhi. Views are personal.]