Canada: The Louboutin Decision - A Step In The Right Direction For Colour Marks

The Second Circuit of Appeal of the United States recently released a decision of importance to brand owners and of particular significance to the fashion industry.  In Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc. No. 11-3303-cv (2d Cir. Sept. 5, 2012) (Louboutin), the U.S. Appeal Court held that the signature red lacquered sole of Christian Louboutin shoes is entitled to trademark protection.  

Two decades prior to this decision, Louboutin introduced the red-soled shoe, which has since become highly coveted and popular in the fashion world.  Louboutin sought, and was granted, trademark registration for the Red Sole trademark comprised of a design of a shoe with a lacquered red colour claim for the sole of the shoe, as shown below:

Louboutin then sought to stop another prominent fashion house, Yves Saint Laurent (YSL), from selling its red monochromatic shoe, featuring a red sole that matched the upper portion of the shoe. Louboutin sued YSL for trademark infringement; the district court declared Louboutin's Red Sole registration invalid and held that a single colour can never serve as a trade mark in the fashion industry since colour is a necessary element of fashion design. In the appeal decision, the Court rejected the district court's ruling and affirmed the position that a single colour can serve as a legally protected trademark, including within the fashion industry. 

This important U.S. Appeal decision appears to affirm stronger protection to colour marks than the protection currently afforded to such marks in Canada.  In Canada, it is not possible to obtain trademark registration of a colour alone, though through extensive use and acquired distinctiveness, a passing off claim may be available to brand owners seeking to protect its signature colour. 

The current published view of the Canadian Trademarks Office (TMO) is that colour alone is not registrable as a trademark, following the 1963 decision Parke, Davis & Co Ltd. v. Empire Laboratories Ltd. ((1963) 41 CPR 121 (Ex)) that a colour is not registrable in itself. (The current Trademark Examination Manual IV.2.1, page 98, confirms that colours, alone, are not accepted for trademark registration.) However, the TMO will accept marks that consist of a specific colour applied to a product of particular shape and size.  If applied to a specific product, shape, or design, a colour may acquire distinctiveness through use in Canada. The degree of distinctiveness acquired is a question of fact that places a heavy onus on the applicant.

The Federal Court of Canada has confirmed that colour applied to the entire exterior of an article is a valid trademark. In Smith Kline & French Canada Ltd. v. Canada Registrar of Trademarks ([1987] 2 FC 633 (FCTD)) the court reversed the registrar's finding and found that the colour green applied to the exterior of a pharmaceutical tablet of a particular size and shape was a valid trademark. The judge stated that "while distinctiveness, an issue which is not before me here, will always be an important hurdle for an applicant to overcome in obtaining registration of a trade-mark which relies heavily on colour, I would find it difficult to hold that such a trade-mark could never be registrable."

The Supreme Court of Canada has recognised that colour can distinguish a particular manufacturer. In Ciba-Geigy Canada Ltd. v. Apotex ([1992] 2 SCR 120, 44 CPR (3d) 289 (SCC)) the court stated that "the product's appearance or its packaging – shape, size or colour – may be characteristic of a particular manufacturer and have the effect of marking out the product or making it recognizable as his own." This reasoning by the country's highest Court would support a passing off claim in respect of a brand's signature colour.

The Louboutin decision reinforces the U.S. position that a single colour can serve as a trademark only if it has acquired distinctiveness by its owner to the point that the public associates it with a particular brand. To be sure, Louboutin registered the red sole as a trademark on the basis of its strong reputation in the signature red sole, achieved through nearly two decades of extensive use, sales, and advertising of the product. This criterion of acquired distinctiveness echoes the position taken by Canadian courts, requiring an applicant to show that the colour mark has acquired secondary meaning. Moreover, while the Louboutin decision held that there is "no reason that a single-color mark in the specific context of the fashion industry could not acquire secondary meaning...", the Court in fact limited Louboutin's Red Sole Mark registration to only those situations in which the red-lacquered sole contrasts in color with the rest of the shoe, granting YSL the right to sell its all-red shoe. Again, the U.S. court appears to align with the Canadian position that colour can constitute a trademark if applied to a specific product, shape, or design, in this case, the distinctive red sole where the remaining shoe is of a contrasting colour. Nevertheless, brand owners will no doubt use the Louboutin decision to seek broader, more general, protection in the U.S. of a brand's "signature colour."  While in Canada such protection of a "signature colour" is not currently a registrable right, a passing off claim could be available to brand owners.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions