Nowadays, it seems common to see women of all ages strutting
around the city with red soled shoes. For some people, seeing
red soled shoes means nothing. However, the fashion savvy
will be quick to recognise that the owner has probably paid a
small fortune for their shoes, produced by exclusive French
designer, Christian Louboutin.
Louboutin's shoes are so famous that they even inspired a
song by Jennifer Lopez called Louboutins.
Louboutin obtained a trade mark in the United States for a
lacquered red sole on footwear in 2008 (Trade Mark). Colour trade
mark applications have also become quite common in Australia,
though colour combination trade marks seem to be granted more
readily than single colour trade marks.
Earlier this year, Louboutin brought a copyright and trade mark
infringement action in the Federal District Court in Manhattan, New
York against iconic fashion house Yves Saint Laurent
(YSL), over four shoe designs that were featured
in the YSL Cruise 2011 collection. YSL's Tribute, Taboo, Palais
and Woodstock shoe models featured red soles similar to those
protected by Louboutin's Trade Mark.
YSL argued in its defence, that no fashion brand or brand should
have a "monopoly on a colour".
Judge Victor Marrero ruled that Louboutin's Trade Mark was
"overly broad" and most likely not protectable. He
implied that the trade mark should be cancelled despite the fact
that he described Louboutin's shoes as "a product visually
so eccentric and striking that it is easily perceived and
remembered". He went on to say:
"Because 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 trade
mark protection, even if it has gained enough protection in the
market to have secondary meaning".
Judge Marrero made reference to the fact that the famous
jewellery store Tiffanys has a trade mark for the very precise
shade of blue used on its packaging but acknowledged that owning a
whole colour category when applied to the sole of a shoe was a
different proposition that would more than likely dampen other
Judge Marrero declined to grant a preliminary injunction to
Louboutin against YSL. Louboutin intends to appeal Judge
Marrero's judgments in a bid to block YSL from producing red
soled shoes in its 2011 Cruise collection.
As a result of the decision, YSL has, for the time being, been
able to continue producing its red soled shoes and has also
inspired many other shoe designers and manufacturers to add a touch
of red to their shoe soles.
In Australia, it is likely that a judge would agree with
Marrero's reasoning. Several decisions in respect of colour
trade marks indicate that whilst colours can certainly be protected
as trade marks in Australia, there is a very strong onus on the
registrant to show how the colour is used as a means of
distinguishing a company's brand. Colour trade mark
applications are more likely to succeed if they can be connected to
a distinctive shape of goods or the layout and design of a
particular product, and if colour combinations are used.
If you would like more information about registering your trade
mark in Australia and internationally, please contact Alexia
Marinos, Registered Trade Marks Attorney and Senior Associate at
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