It will not be an exaggeration if we say the world has shrunk due to social media. We never know what will grab people’s attention and at what point in time, because on social media platforms anyone can be viral and all of a sudden they become world famous. One such incident happened recently which was intriguing especially because it involved intellectual property rights. A video went viral where a mother was furious about a Rs. 35000 (thirty five thousand rupees) belt bought by her daughter.[1] She said “the belt looks like belt of Delhi Public School (DPS) which would have costed less than Rs.150 (one hundred and fifty)”. Jokes apart, if we look at it from the perspective of Intellectual Property, the mother in the video unwittingly pointed out the a possible trademark infringement by Gucci. Apparently, the trade mark she was referring to was the color trademark of DPS. The question to ponder over was whether Gucci infringed color trademark of DPS? In order to analyze whether there is trademark infringement in this case, we shall at the onset try and understand color trademarks.
What is a color trademark?
Color trademarks, in today’s time have assumed importance along with conventional trademarks. Indeed, color can be a powerful and effective tool for creating brand image. Color per se is registered as a trademark when it is used extensively and acquires a secondary meaning by becoming distinctive. If we refer to the definition of a trademark in Section 2 (1) (zb) of Trademarks Act, 1999, it appears to be inclusive in nature and therefore it would seem that color can be registered as a trademark. The courts in India, however, have been equivocal in this regard. Most of the cases decided relate to a single color as a trademark. It is indeed not easy to grant a single color as a trademark because if the person having trademark registration for any color tries to get monopoly over the color, it is not good from the competition perspective. Similarly, in the case of Cipla Limited vs M.K. Pharmaceuticals[2] Plaintiff filed an application before Delhi High Court seeking interim injunction against the Defendant. The Plaintiff was manufacturing “NORFLOXACIN” tablets with trade name ‘NORFLOX-400’ in oval shape, orange color and in blister packing. The Defendant was manufacturing NORFLOXCIN tablets in the same color, shape and blister packing. The Hon’ble Delhi Court observed that the Plaintiff could not claim monopoly in color of the medicine as the consumers don’t associate the medicine with colour, shape and size, and dismissed the application for interim injunction.
On the contrary, in the case of Marico Limited vs Mr. Mukesh Kumar & Ors.[3], the Delhi High Court recognized the color of the bottle of Parachute oil as a trademark. In the instant case Marico Limited, the Plaintiff, was engaged in the business of edible oil, hair oil and several other products. They had registered several trademarks including but not limited to ‘PARACHUTE’ in 1948 as well as the blue color PARACHUTE label in 1974 through their predecessor Bombay Oil Industries. The Plaintiff sought an injunction against the Defendant Mr. Mukesh Kumar & Ors. as they were using ‘SHRI LAXMI’ label with blue color. Moreover, they withdrew the trademark ‘SHRI LAXMI’ and replaced ‘EVEREST’ with the same color and trade dress. The Delhi High Court was of the opinion that it was a prima facie case of infringement and also that the Defendant was guilty of passing off, as the they copied the registered trademark of the Plaintiff which included the bottle shape, color and labeling .
However, in the year 2018 the single judge bench of the Delhi High Court denied the red color shoe sole as a trademark to Christian Louboutin. Christian Louboutin has acquired distinctiveness and is well known among its consumers, so much so that there is no chance of confusion among the consuming public. Christian Louboutin had earlier approached Delhi High Court for injunction against the Defendants as they were selling shoes with red colored which were similar to the Plaintiff’s products. The Single judge bench held that the Plaintiff cannot claim the red color in the sole as a trademark.[4] In the year 2019 the Plaintiff filed an appeal against the judgment of the single judge bench.[5]The division bench set aside the findings of the single judge bench and stated that “a single colour cannot be claimed as a trademark was not something that be finally determined suo motu by the court at the very first hearing of the suit”. The division bench reversed the judgment of the single judge bench on the basis that that judgment was not passed on merit. The stand of courts is still unclear with respect to color trademarks. In such circumstances it is difficult to claim a trademark over a single color. But a combination of colors can be easily registered as a trademark. Coming to the DPS belt and Gucci belt saga, it is difficult to say that DPS can be successful in prosecuting Gucci for infringing their trade mark. On conducting a simple Google search we can observe that Gucci has been using the color strip pattern for a very long time. Gucci is a well-known brand and there maybe no likelihood of confusion among consumers. This viral video can prove to be an eye opener for businesses as it stresses on the need protect their trademark or trade dress, even if it is a color mark.
Conclusion
It is quite clear that there is no trademark infringement by Gucci as both the belts are different when compared closely. It does however, bring to light the fact that business owners have to be more concerned about their color trademarks. It is not difficult to register and protect combination of colors having unique representation as a trademark. Single color marks can also be registered and protected, provided the trademark owner provides evidence of factual distinctiveness or acquired distinctiveness, consumer trends and also the assessment of the media coverage of the product that highlights the color in question.[6]
[1] https://www.zoomtventertainment.com/lifestyle/article/viral-video-daughter-buys-gucci-belt-worth-rs-35000-shocked-mom-says-150-rupay-me-mil-jata-hai/770646
[2] https://indiankanoon.org/doc/1127455/
[3] https://indiankanoon.org/doc/19504407/
[4] https://indiankanoon.org/doc/175186752/
[5] https://indiankanoon.org/doc/151677538/
[6] Manual of Trademarks, Practice and Procedure, 2015 pg. 57 and 84 , https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
Quite informative content.