This article was written for and first featured in Intellectual Property Magazine
THE CASE:
Christian Louboutin SA et al, v Yves Saint Laurent America, lnc et al, US Southern District Court of New York
10 August 2011
In light of the debate over whether or not a colour can be a valid trademark, Simon Bennett and Rachel Cook discuss this season’s most fashionable trademark case
Christian Louboutin (“Louboutin’) accused Yves Saint Lauren (YSL’) of infringing its US registered trademark by using red outsoles on styles of shoes in its Cruise collection (Tribute, Tribtoo, Palais and Woodstock) and claimed $1 million in damages.
YSL defended the action stating that red outsoles have been commonly used as an ornamental design throughout history identifying examples as disparate as Lours XIV and Dorothy in the Wizard of Oz. Thus, Christian Louboutin cannot claim any valid monopoly. YSL also counterclaimed that the red outsole trademark was invalid and asked for damages for interference with its business.
In order to succeed, Louboutin needed to demonstrate that his US trademark merited trademark protection, and that the YSL shoes were sufficiently similar to cause confusion as to their origin.
However, while Louboutin may not have been the first to use red outsoles, absolute novelty is not a necessity to qualify for trademark protection. The strength of a trademark registration will always be connected to whether consumers link that mark to a particular business, which in this context can only be established through use.
In the 10 years since Louboutin began to sell shoes with red outsoles, the profile of his products has grown through his celebrity followers and the media to the extent that many women would consider red outsoles to be synonymous with him. As a result of their style credibility, Louboutin shoes sell for hundreds of pounds. Even the Wikipedia entry for Christian Louboutin states that, “Since 1992, his designs have incorporated the shiny, red-lacquered soles that have become his signature”. Therefore, Louboutin s chances of success in defending his trademark seemed strong, or so it was assumed.
Decision of the New York court
In his judgment, Judge Marrero did not consider that colour was capable of trademark protection. He stated that: “In the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired any secondary meaning. ”
Judge Marrero also went on to consider the possibility for the use of specific shades to become out of bounds for all areas of a shoe if a company has staked its claim to use shades on each part, such as the outsole, the insole and the heel.
The result of such a monopoly in Judge Marrero’s view would be that: “Placing off limit signs on any given chromatic band by allowing one artist or designer to appropriate an entire shade and hang an ambiguous threatening cloud over a swath of other neighbouring hues, thus delimiting zones where other imaginations may not veer or wander; would unduly hinder not just commerce and competition but art as well. ”
As a result Louboutin failed in its attempt to stop YSL from using a red outsole.
Registrability of colour trademarks in the EU
How would the issue be decided in the UK and the EU?
In addition to his US trademark registrations, Louboutin has also sought protection for its red outsole in both the UK and the EU. The UK trademark has been successfully registered, while one EU trademark application is under opposition, even though another for red in the shape of a shoe outsole has been registered.
Under Article 4 of Council Regulation 207/2009/EC, any sign that is capable of being represented graphically and distinguishes the goods or services of one business from another, can be registered as a Community Trade Mark.
While colours are not specifically citied in the list of examples of representations in the Article, in principle, colour registrations are not subject to a different assessment by OHIM, such as being able to show that the use has acquired distinctiveness in the minds of consumers due to frequent and consistent application.
However; in practice, any application will need to be by reference to a particular pantone of colour, and its prospects of successful registration will be increased substantially with the support of prior use, pre-existing consumer awareness, recognition and a focused manner of use. Even then, many have tried and have failed.
Yellow diggers
Often the underlying reason for the rejection of an application to register a colour will be the view that consumers only perceive colours as ornaments and decoration, rather than being an indicator of trade origin. An example of this is the decision of the OHIM’s Board of Appeal in JC Bamford Excavators Limited¹, where the Board of Appeal rejected JCB’s application to register a particular colour of yellow used on their diggers on the basis that:
- The public, while seeing words and logos as badges of origin, did not necessarily make the same connection with the external appearance of goods;
- Yellow was primarily used for visibility and signalling purposes, and these colours were commonly used in the construction industry;
- There were too many different colour combinations to support consumers recalling a particular combination; and
- There was no evidence that the public perceived the colour yellow independently to the word “JCB”.
Orange seed installations
This approach was underlined by the Court of justice of the European Union (CJEU) in the case of KWS Saat AG², which dealt with the registrability of the colour orange for various goods and services in the agricultural sector.
The CJEU repeated the view that the public when viewing goods were unlikely to divorce the October 2011 lntellectual Property magazine 81 particular colour from any word mark or logo and recognise it as an independent indicator.
However, the CJEU did consider that this could be overcome in exceptional circumstances, particularly if the colour trademark related to a restricted number of goods or services and the relevant market was very specific.
The colour orange has proved popular ground for trademark applications and disputes. Orange coloured companies easyGroup and mobile phone company Orange, settled their argument about the protection of the colour orange in the field of mobile communications just before their date in court. Orange holds a UK registered mark for pantone 151 for telecommunication services. However; neither hold EU registrations solely for colours.
Purple cat food
One instance of success in this area was the application by Mars UK Limited to register a particular shade of purple for its Whiskas cat food. Initially, the OHIM had rejected the application on the grounds that it lacked any distinctive character.
Mars appealed, arguing that the examiner had not properly considered the evidence produced in relation to the acquired distinctiveness of the use of the colour mark. The factors which were considered relevant to this assessment included:
- The intensiveness and duration of the use;
- The level of advertising investment;
- The level of recognition of the mark amongst potential purchasers; and
- The market share enjoyed by the mark in various European countries.
Due to the substantial evidence produced by Man, including a survey which showed between 50% and 75% associating the colour with the brand, Mars was able to demonstrate that the colour purple had a free standing link in consumers minds to the brand above and beyond being used in conjunction with the word mark and/or logo “Whiskas”.
Red outsoles
In light of the case law on the registration of colours, the chances of Louboutin being successful in any application for the specified use of red (pantone 1 B 1 663TP to be precise) on the outsole of a shoe in Europe are good, given that the scope of the monopoly sought is sufficiently limited. Although, whether the registered trademark for red alone would be held to be valid is more questionable.
However, could the reasoning of the US judgment be applied to prevent the trademark applications succeeding, or the existing UK market surviving an attack on its validity?
In the case of Kuka Roboter GmbH v OHIM³, an action involving the application for the registration of orange as a colour mark the 82 Intellectual Property magazine CJEU stated that: “The fact that the number of colours actually available is limited means that a small number of trademark registrations for certain goods or services could exhaust the entire range of colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. It must therefore be acknowledged that there is in trade mark law a public interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type of those in respect of which registration is sought.”
This reflects the same view as the US judge. Allowing monopolies for colours could have a direct and negative impact on competition.
Availability of signs to protect competition
However; this must be contrasted against the decision of the CJEU in Adidas AG v Marca Mode CV4, in relation to a reference from the Dutch courts. The Dutch courts had requested guidance from the CJEU as to whether account should be taken of the general public interest in ensuring that the availability of signs were not unduly restricted when considering the validity and infringement of a sign (the Adidas three stripes), which had acquired distinctiveness through use.
The CJEU observed that if the this argument was allowed to succeed, there would be the potential for abuse by Adidas’ competitors. They would be able to use marks similar to Adidas’ three stripes that could create confusion in the minds of consumers and then simply point to the stripes needing to “remain available” for use to evade any liability. The CJEU was therefore content that the limits of the trademark owner monopoly in this situation, and in relation to free competition, could be protected by the national courts through the consideration of whether the similar use took unfair advantage of the trademark and/or if consumers were confused.
Application to Louboutin’s red outsole trademark
Arguably, the question of availability of stripes to be used as decoration on products is not far removed from the availability of specific shades of colour being available to use as decoration. Therefore, the same reasoning should apply to both.
In the event that the trademark concerned is sufficiently limited to a particular shade, a defined manner of use supported by evidence of acquired distinctiveness should allow it protection. However, as acknowledged in the Adidas case, even if a trademark is valid it does not necessarily mean that it is infringed, and to succeed in an infringement claim a claimant needs to show both.
lf the Louboutin v YSL case were taking place in the UK or EU courts, YSL would have good argument in relation to the consumers of YSL shoes not being confused due to the sophistication of the consumers involved. Equally, YSL could argue that due to its own commercial prowess in the fashion industry it does not need to take advantage, unfair or otherwise of Louboutin’s trademark, and its use will not result in detriment.
However, Louboutin should not be restricted per se from protecting a sign in which he has substantially invested from wide spread use by businesses that have applied similar red outsoles. These competitors have the specific intention of making huge volumes of sales across Europe by riding on the coat tails of Louboutin’s efforts. Although it is unlikely, particularly in the value sector that these sales would be ” lost” customers for Louboutin in the medium term, the perception of Louboutin shoes as an aspirational product and their desirability would likely be damaged beyond repair.
Footnotes
- JC Bamford Excavators Ltd v OHIM Second Board of Appeal, Cases R75MO04-2 and255/20042
- KWS Saat v OHIM Case C-44/02 P
- Kuka Roboter GmbH v OHIM Casef-97/08
- Adidas AG & Adidas Benelux BV v Marca Mode, C&A Nederland, H&M Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV Case C-102/07.
