Colour red is a trade­mark in US

Louboutin and Yves Saint Lau­rent bat­tle over paint­ing the out­sole of high-fash­ion shoes a spe­cific colour

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - THALIA LE ROY

THE US Court of Ap­peals re­cently handed down a judg­ment stat­ing, in essence, that a sin­gle colour can serve as a trade­mark in the fash­ion in­dus­try in the US.

For a mark to qual­ify for pro­tec­tion as a trade­mark it must be dis­tinc­tive. In other words, a mark ap­plied to prod­ucts or used in re­la­tion to ser­vices must serve as an in­di­ca­tion of the ori­gin of those prod­ucts or ser­vices.

This case in­volves two renowned fash­ion houses, be­ing the cel­e­brated woman’s high-fash­ion shoe de­signer, Chris­tian Louboutin, and the fa­mous Yves Saint Lau­rent (YSL). The dif­fer­ence be­tween these brands is that YSL is known by its name “Yves Saint Lau­rent” whereas Louboutin’s shoes are in­stantly recog­nised by their bright lac­quered red out­soles.

Louboutin in­tro­duced his sig­na­ture footwear to the fash­ion mar­ket in 1992, paint­ing high-gloss red lac­quer on the out­sole of his footwear de­signs. In 2008, he reg­is­tered the red lac­quered out­sole as a trade­mark in the US, thereby ob­tain­ing the ex­clu­sive right to use lac­quered red as a trade­mark on the out­sole of shoes. So, when YSL com­menced mar­ket­ing and sell­ing a monochrome red shoe with a red sole, Louboutin saw red, re­act­ing by lodg­ing for­mal pro­ceed­ings in the US Dis­trict Court for the South­ern Dis­trict of New York against YSL for trade­mark in­fringe­ment based on his reg­is­tered red sole trade mark.

YSL counter-at­tacked, seek­ing to can­cel Louboutin’s reg­is­tra­tion. YSL claimed that the trade­mark should be can­celled be­cause the mark is not dis­tinc­tive and the colour red on an out­sole of a shoe was func­tional in the fash­ion world. YSL’s main con­tention was that if Louboutin is af­forded the ex­clu­sive right to use red on the out­sole of a shoe, all fash­ion de­sign­ers would have one less colour on their pal­ettes to paint with.

When the case was ini­tially heard, the Dis­trict Court held that a sin­gle colour could never serve as a trade­mark in the fash­ion in­dus­try, rul­ing in favour of YSL. The ef­fect of this judg­ment was that, if you spent sig­nif­i­cant time, money and ef­fort to pro­mote your

A mark ap­plied to prod­ucts or used in re­la­tion to ser­vices must serve as an in­di­ca­tion of the ori­gin of those prod­ucts

fash­ion brand un­der a sin­gle colour, you could not seek trade­mark pro­tec­tion even if con­sumers iden­ti­fied your brand by that colour. Many fash­ion­istas were trou­bled by this de­ci­sion.

The fa­mous jew­ellery brand, Tif­fany & Co, was one of those con­cerned, fear­ing that its prom­i­nent robin’s-egg blue trade­mark reg­is­tra­tion would be vul­ner­a­ble to at­tack. In Jan­uary, as expected, Louboutin (to­gether with Tif­fany) brought an ap­peal against the de­ci­sion.

The pri­mary ques­tion the US Court of Ap­peals was faced with was whether or not a sin­gle colour could qual­ify as a trade­mark in the fash­ion in­dus­try and, in par­tic­u­lar, as the sig­na­ture of high fash­ion women’s footwear. In a wel­comed judg­ment, the Ap­peals Court con­cluded that the US Dis­trict Court had slipped up, stat­ing that Louboutin’s red sole trade­mark, has through years of use and ad­ver­tis­ing, be­come a dis­tinc­tive sym­bol that iden­ti­fies the brand. How­ever, the Court qual­i­fied this by stat­ing that Louboutin’s red sole trade­mark only ex­tended to in­stances where the re­main­der of the shoe was de­signed in a con­trast­ing colour or pat­tern.

YSL was not com­pletely dis­ap­pointed with the out­come of the case be­cause, though the Ap­peals Court con­firmed that Louboutin’s reg­is­tered trade­mark was valid, it held that YSL had not in­fringed the reg­is­tered mark. The monochrome de­sign em­ployed by YSL was not use of Louboutin’s trade­mark be­cause YSL had not painted the out­sole of its shoe in red to con­trast with other colours.

In sum­mary, a sin­gle colour can be reg­is­tered as a trade­mark in the US if it is dis­tinc­tive.

In SA, the po­si­tion is less cer­tain. Though colours, by def­i­ni­tion, can qual­ify as trade­marks in SA, if the marks have, through use, be­come dis­tinc­tive, any per­son who at­tempts to reg­is­ter a sin­gle colour faces hur­dles.

The re­quire­ments in the Trade Mark Reg­istry’s guide­lines must be ad­hered to. Not only must the ap­pli­cant prove that the mark, in a spe­cific man­ner of use ap­plied to an ar­ti­cle or in re­la­tion to a ser­vice, is dis­tinc­tive but the trade­mark ap­pli­ca­tion must also con­tain the in­ter­na­tional colour codes (pan­tone codes) and a rep­re­sen­ta­tion and de­scrip­tion of the ex­act form in which the colour will be used on the goods or in re­la­tion to the ser­vices. In prac­tice, it has been ex­tremely dif­fi­cult to sat­isfy the Trade Marks Of­fice that a sin­gle colour mark is reg­is­tra­ble.

Lo­cal de­sign­ers are en­cour­aged to pro­tect their colour brands, es­pe­cially in light of the global trend to recog­nise and pro­tect colour trade­marks, but may ex­pect a hard bat­tle if they try to claim rights in a sin­gle colour.

FASH­ION IN­DUS­TRY

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