Colour marks are relatively rare in the world of trademarks and court cases centred around them are rarer still. One very high-profile exception to this are the ongoing lawsuits involving protection of Christian Louboutin’s famous red-soled shoe as a trademark. Proving just how diverse and intricate arguments over what you can and cannot trademark protect can get in the realm of intellectual property (IP). Since these cases involving the Louboutin red have been some of the most widely covered cases in the media over the past few years, we thought we’d take a look at their progress through the courts and provide some key take-away principles to help businesses who are evaluating trademark protection for their brand. Battles with Zara and Yves Saint Laurent
Any footwear fan will recognise red-soled shoes as being synonymous with the Louboutin brand, which has trademarked the red sole (depicted below). This mark first took centre stage in the courts 10 years ago when Louboutin failed to prevent Spanish retailer Zara from selling its own version
of the red-soled shoe. Zara successfully challenged Louboutin’s mark on the basis that it wasn’t precise enough. As a result, Louboutin proceeded to refile the mark in a specific shade of red by reference to an internationally recognised Pantone colour. As such, the updated mark consists of a particular shade of red applied to the sole of a high-heeled shoe, as shown in the representation below. The mark also has the following disclaimer: ‘The contour of the shoe does not form part of the trademark but is instead intended to show the positioning of the mark’.
In 2012, Louboutin’s single colour mark was ultimately held to be valid after Yves Saint Laurent moved towards selling its own red-soled shoe
. The courts confirmed that colour marks are protectable “where the colour has attained secondary meaning and therefore identifies and distinguishes a particular brand”. In this case it was held that the red sole, “to those in the know…instantly denotes his shoes”, and Louboutin prevailed. The latest dispute with Van Haren Schoenen BV
The following year, Louboutin sued a Dutch shoe retailer for trademark infringement
after it too started selling red-soled high-heeled women’s shoes. As is often a risk when bringing infringement proceedings, the defendant counter-attacked the mark. It claimed that Louboutin’s trademark should be declared invalid because it consisted exclusively of a shape that gave substantial value to the goods. To put this in context, trademarks can be refused or declared invalid if they are devoid of any distinctive character or if they consist exclusively of the shape (which has since been expanded to also include other characteristics) which gives substantial value to the goods. Let’s call this principle ‘The Restriction’. ‘Substantial value’ could, for example, be the extent to which it played an important role in a consumer’s decision to purchase the shoes. The court found that the mark did not consist exclusively of a shape since its main element was a specific colour and it sought to protect using this particular shade of red to the sole of the shoe only. However, this didn’t necessarily mean that the trademark was safe, as ‘The Restriction’ could potentially apply in the case of a trademark consisting of the shape of the goods which sought protection for a certain colour. The court commented that ‘substantial value’ may change and evolve over time since the appeal of a product’s looks is likely to vary in line with the public’s perception of fashion trends. To this end, it said that the deciding factor is essentially whether the overall impression of the mark leads the public to associate the mark with the brand owner, rather than how the public distinguish between shape, colour or position marks. This is, after all, the fundamental purpose of a trademark.
The court also weighed up public policy considerations in determining the distinctiveness of the mark and observed that where colour marks are indistinguishable from the appearance of the goods in question, they will only be distinctive where they depart significantly from the norm or customs of the sector at issue. It follows that similar marks in a grey, black or brown colour would be “devoid of distinctive character by virtue of their frequent use by market operators”. Given all of the above, it is anticipated that the court will now rule that the red-sole trademark is indeed valid. What next?
This case will be of particular interest to those who use colours and/or shapes in the course of trade as a source identifier or badge of origin. Registered trademarks effectively reserve that sign to a single undertaking for a long period of time (at least 10 years and potentially forever). As a result, the scope of monopoly protection afforded by any mark is not generally permitted to encroach on characteristics that must be kept within the public domain to be used freely by all market players. We have designed a range of trademark products
which will help protect the future of your business today. You can find a more detailed product description and laydown of the benefits to your business in our recent blog post
. To find out more about which aspects of your brand or business may be registrable as a trademark and exactly what is involved in the process (including fees), get in contact with LawBite. Remember, to check your business’ position regarding IP and trademark, please do make use of the Free Intellectual Property Checklist. To buy the right Trademark product for your business or if you would like intellectual property legal advice
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