A French court recently decided that a Spanish shoe manufacturer called Zara wasn't infringing a trade mark registration belonging to luxury designer Christian Louboutin for red-soled shoes,   because the registration was vague as it contained no Pantone reference number.  The reason why Louboutin felt the need to sue Zara was probably not unrelated to the fact that, whereas his red-soled shoe retails for some E490, Zara's product sells for E49. The decision attracted considerable publicity, mainly because Louboutin has been trying very hard to monopolise the colour red for shoe soles for some time.

The annexation of colour is a sensitive issue, particularly so in the fashion industry where colour plays such an important role.  A while back Louboutin tried to stop YSL selling a red 'slingback' shoe  in the USA, on the basis that YSL's product infringed Louboutin's  US trade mark registration for what's described as 'a lacquered red sole on footwear'. This case was widely publicised, not least because the judge delivered a very florid and 'arty' judgment.

The US judge clearly felt that the fashion industry was atypical, and he phrased the issue facing the court as follows:  'The narrow question presented here is whether the Lanham Act (the US trade mark legislation) extends protection to a trademark composed of a single colour used as an expressive and defining quality of an article of wear produced in the fashion industry. In other words, the court must decide whether there is something unique about the fashion world that militates against extending trademark protection to a single colour, although such registrations have been upheld in other industries.'

The judge then drew (possibly dubious) parallels between the worlds of art and fashion, saying that both have a 'dependence on colour as an indispensable medium to create aesthetic appeal.'  He went as far as to speculate whether Picasso, if he'd registered blue ('the colour of melancholy') during his Blue Period, could have stopped Monet using the colour to depict water in his paintings.  He said this: 'No one would argue that a painter should be barred from employing a colour intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also stakes out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion.'

He concluded that 'Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers could do, whilst allowing Louboutin to paint with a full palette.' He explained this by saying that Louboutin's claim to the colour red 'is, without limitation, overly broad and inconsistent with the scheme of trade mark registration ... Awarding one participant in the designer shoe market a monopoly on the colour red would impermissibly hinder competition amongst other participants.  YSL has several reasons to use red on its outsoles – for example, to reference traditional Chinese lacquer ware, to create a monochromatic shoe, and to create a cohesive look consisting of colour-coordinating shoes and garments... if Louboutin were to succeed on its claim of trademark infringement, YSL and other designers would be prohibited from achieving those stylistic goals.' He went on to cancel Louboutin's trade mark registration, a decision that I understand is still on appeal.

The decision attracted a great deal of academic comment, and it was approved by those in the USA who believe in the concept of 'aesthetic functionality'. This has been described in one case as follows: 'If a design's aesthetic value lies in its ability to confer a significant benefit that cannot be practically duplicated by the use of alternative designs, then the design is functional.' The purpose of the notion is to prevent protection being granted for attractive but non-novel features. An example of this aesthetic functionality that its proponents give is this:  farm equipment is in no way enhanced by the colour green, but if consumers expect it to be that colour, the colour serves a non-source related function, even if the colour comes to be associated with one company.

Even outside of fashion, colour will always be difficult to monopolise and register. And  so it should be  - there are only so many colours out there, and everyone should be entitled to use them.  Yet it's quite clear that certain colours do designate certain companies or products – think the colour yellow and MTN, the colour green and BP. It's also clear that, in certain circumstances, it's possible for a company to create an association with a certain colour in a short period of time - think back to how Vodacom's change to the colour red was accompanied by enormous publicity, a sure sign that Vodacom sees colour as being a critically important branding component.

The authorities are, however, sceptical of attempts to monopolise colour. For example, the ASA rejected an attempt by IBurst to claim a monopoly in the colour orange, and the South African Trade Marks' Office refused an application by Cadbury to register the colour mauve as a trade mark for chocolate, because it wasn't convinced that the colour had become distinctive of one company or product.  Veuve Clicquot, on the other hand, managed to get the colour orange registered as a trade mark in Europe for champagne, and MTN certainly has trade mark registrations for the colour yellow.

In order to get a trade mark registration for a colour, you will need to prove that the colour has, as a result of significant use, become associated with your product, and that the colour is in fact seen as an indicator or origin. It may be easier to prove acquired distinctiveness if you're in an industry where there are only a handful of players, and if you're in an industry where colour doesn't play as much of a role as it does in fashion or perhaps certain FMCG industries.  From a practical point of view, you will need to lodge a sample or reproduction of the colour that complies with the test laid down by the European court, namely that it is 'clear, precise, self-contained, easily accessible, intelligible, durable and objective'. You may also need to include a verbal description of the mark, and specify a Pantone number in order to limit the registration as much as possible.  In cases where you are seeking to protect a colour combination, the EU authorities suggest that you must spatially limit and systematically arrange the colours.

Notwithstanding the unique nature of the fashion industry and the difficulties that Christian Louboutin has experienced elsewhere,  I think that he'd have a reasonable prospect of getting  a trade mark registration for red-soled shoes in South Africa, provided that the application was sufficiently limited, for example to a  particular shade of red.  For starters, the South African trade mark authorities are not quite as strict as their counterparts in Europe and the USA.  Second, the concept of aesthetic functionality is not one that's known here, in fact many would regard it as something of a contradiction in terms. And, most importantly, as every South African woman who loves her shoes knows,  red- soled shoes mean just one thing: Christian Loubotin.

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