Color has always been one of the most important aspect of fashion brands. In fashion industry color is known to impart a meaning to the design. It is many times the color that gives the unique identity to the fashion products. Christian Louboutin's 'Red Sole Shoes' are not just shoes but a fashion statement for women around the globe. According to Louboutin, who has painted the soles of his shoes red since 1992, 'red implies sensuality -- and serves as a crafty, subtle branding tool. I selected the color because it is engaging, flirtatious, memorable and the color of passion.'1
The question of acquiring rights over a color is a fascinating battleground between courts and international brands, with different squads playing with different rules. The recent one to join the league is Christian Louboutin Red Sole case in the European Court of Justice (ECJ). The center of the controversial Christian Louboutin Red Sole Case in the European Court of Justice (ECJ) revolves around one important question, which is, 'Can a designer be allowed to have exclusive rights over a color?'. Also, the color 'Red' in question here is one of the most popularly chosen colors in the fashion world. 'Red' is the color of fire and blood, so it is associated with energy, war, danger, strength, power, determination as well as passion, desire and love. Red as a colour is used in fashion to strongly bring images to the foreground. It is used as an accent color to stimulate people to make quick decisions.2
The European Union (EU) Court's Advocate General Maciej Szpunar in his opinion specified that the trademark of Christian Louboutin, Pantone18 1663TP, was a combination of color and shape, and therefore, could be refused or declared invalid on the grounds of EU trademark law. He also noted that his analysis relates exclusively to the intrinsic value of the shape and take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.
Since the time Louboutin grabbed his assistants red nail polish and applied it to the outsole of a shoe because he disliked the design a quarter century ago, red sole became his signature design for all the shoes manufactured under his mark.
The primary goal of trademark law is to protect consumers from being confused about the 'origin and quality of the product' and giving a unique identity to the goods. Color Trademarks is a point of discussion in different countries, each one dealing with the issue differently. In the marketplace today, colors are playing a very important role in the world of fashion. Sometimes the distinctive feature in a design is conferred by color. Article 15 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) redefined the definition of trademark law to encompass 'any sign...capable of distinguishing the goods or services of one undertaking from those of other undertakings'. This allowed a non-conventional trademark i.e. Color category to be given trademark protection.
Therefore, what is tested while giving exclusive rights in cases like these is how closely related is the specific color to the design? And whether the relevant consumers are capable of instantly recognizing the color being uniquely associated with the design or not? Details of different jurisdictions dealing with the issue of Color Trademark is discussed below:
- UNITED STATES OF AMERICA
(USA): In the case of Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159 (1995) the US Supreme Court
held that colors alone can be registered as trademark. The
trademark owner must show that the trademark color has acquired
substantial distinctiveness, and the color indicates source of the
goods to which it is applied. Tiffany Blue is one of the most
popular examples of a color trademark.
Christian Louboutin has a valid trademark protection over its red sole in USA. However, in 2016 case of Christian Louboutin v. Yves Saint Laurent, the Second Circuit Court of Appeals specified that Louboutin's trademark is for those situations in which the red lacquered outsole contrasts in color with the adjoining "upper" of the shoe.3
Switzerland, abstract colors may be registered as trademarks,
particularly in case of acquired distinctiveness through use.
However, depending on the goods at issue, some colors—such as
primary colors—strictly belong to the public domain and can
never acquire distinctiveness through use given their absolute
indispensability to the public for use in commerce.
The Swiss Federal Institute of Intellectual Property rejected Louboutin's trademark's extension to Switzerland in 2011. In February 2017, Swiss courts turned down a final appeal by Louboutin to trademark its red-soled heels there, finding that the red soles are merely an aesthetic element. The courts further noted that the fact that the brand has won the battle for trademark status in other markets including China, Australia and Russia did not mean the shoes should enjoy the same status in Switzerland.4
- CHINA: In accordance with the Trademark Law of the People's Republic of China, effective May 1, 2014, any visually perceptible sign, including color combinations, capable of distinguishing the goods of one party from those of others is eligible for registration as a trademark. Hence, color combination marks are registrable as trademarks and service marks in China.5
AUSTRALIA: In Australia,
a specific shade of color, or combination of colors, can be
registered as a trade mark. However, the process of registration
can be difficult and requires significant evidence of use,
particularly for single colors. Cadbury has successfully
trademarked Pantone 2685C 'Cadbury purple'.
Louboutin filed a trademark application for its red soles, specifically Pantone No 18.1663TP applied to the sole of a shoe. The application was accepted on the provision of evidence of distinctiveness/secondary meaning.6
INDIA: The definition of
a mark under the Trademark Act includes a particular color or
'combination of colors' and therefore it can be construed
that colors can be protected in relation to goods and services
under the Trademark Act. Section 10 of the Act states that a
trademark can be limited to a particular color or combinations of
colors. However, such limitation as to color will only be allowed
on determining the distinctive character of the mark.
In India, single colors or shades of colors have attracted attention of the business community in recent times. The Trademark Act, 1999 does not specifically provide for the registration of a single color, although it does not expressly exclude the notion. Prima facie in practice, a color combination stands a better chance of registration. A single-color faces certain obvious hurdles in order to get itself registered. Reason being a single color is never inherently distinctive. However, various proprietors have filed a trademark application for single color and few such proprietors have obtained registration over the same. The criteria for getting registration remains the same i.e. they can be registered when they become distinctive by extensive use and acquiring secondary meaning. Details of few single color registered trademarks as per the records of the trademark registry is given below:
Louboutin holds a valid trademark in India. In December 2017 Louboutin was awarded INR 10,00,000 (USD 15380 approx.) in damages and a permanent injunction against two shoe dealers — Kamal Family Footwear and Adra Steps — for infringing on the trademark in India. Also, Louboutin's 'red sole' shoes were declared as a well-known trademark by the Delhi High Court in India.
- JAPAN: From 2015, color marks became registerable in Japan. On April 25, 2014, an amendment to the Trademark Act of Japan was enacted, introducing the protection of nontraditional marks. Under the amended Trademark Act, "any character(s), figure(s), sign(s), three-dimensional shape(s) or color(s), or any combination thereof, sound(s), or other(s) specified by a Cabinet Order, which is perceptible with human sense" will be protected as a trademark. Under this new definition, a "color per se" mark and a combination of colors without delineated contours gets protected.7
- EUROPEAN UNION
(EU): Article 4 of Council Regulation (EC) No. 40-94
of 20 December 1993, relevantly states that any Community Trademark
may consist of "any signs capable of being represented
graphically...provided that such signs are capable of
distinguishing the goods or services of one undertaking from those
of other undertakings". In Libertel Groep v
Benelux Merkenbureau (case C-104/01) May 6, 2003, the
ECJ held that graphical representation preferably means by images,
lines or characters, and that the representation must be clear,
precise, self-contained, easily accessible, intelligible, durable
and objective. This definition generally encompasses color marks,
and therefore an applicant for a CTM or a national trademark in the
EC may define their color trademark using an international color
code such as RAL or Pantone. In most cases, a color trademark will
be registered only after an enhanced distinctiveness through use in
the EC has been proved. Color combination marks have been
recognized in several General Court judgments, including BCS
SpA v Office for Harmonisation in the Internal Market (Trade Marks
and Designs) (OHIM),  ECR II-04047 and CNH Global NV
v Office for Harmonisation in the Internal Market (Trade Marks and
Designs) (OHIM),  ECR II-05153.
In EU, Christian Louboutin registered his first trademark in 2000 in France. He filed for EU-wide and international protection immediately. The procedure with the European Union Intellectual Property Office (EUIPO) did not run as smoothly. Louboutin applied on 29 January 2010, but on 20 September 2010 the application was rejected by EUIPO´s examiner for the lack of distinctiveness. Again, in 2011. The Board of Appeal did not agree with Examination Office´s decision and registered the trademark (EUTM no: 008845539) on 16 June 2011. But now the registration is again under threat of getting cancelled following the lawsuit with Dutch high-street chain Van Haren.8
Considering that the European Union (EU) court's Advocate General Maciej Szpunar opinion is not binding, it would be interesting to see how European Court of Justice shapes up the final decision.
A table containing the details of the registered trademark in each of the above-mentioned jurisdiction can be found below –
[Source: WIPO's Global Brand Database]
Lastly, a gist of all the information stated above is summarized in the table below for readers convenience.
The European Court of Justice's (ECJ) verdict in this case would have a wider impact. It would be interesting to see whether the ECJ would agree with Advocate General Szpunar's Opinion or would go against it? Keep an eye on this space for more updates on the case.
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.