The latest ruling in the Christian Louboutin saga, which ruled favourably for both Louboutin and the defendant, should provide some encouragement to every South African company in the fashion industry whose product is closely associated with a particular colour.
This is according to Ilse du Plessis, Director of IP at ENS (Edward Nathan Sonennbergs), referring to the luxury designer's attempts in various international courts to monopolise the colour red for the soles of his shoes.
"Louboutin failed to persuade a French court that retail giant, Zara, was infringing a French trade mark registration that he had for red-soled shoes, because the court felt that the registration was too vague as it wasn't limited to a particular Pantone number. At roughly the same time, a US court rejected Louboutin's claim that YSL was infringing his US trade mark registration for red-soled shoes by selling a sling back shoe that was entirely red," explains du Plessis.
According to du Plessis, the US judge wrote a colourful and memorable judgment, in which he held that the fashion industry was different from other industries, and that a single colour could not function as a trade mark in that world. The judge therefore ordered the cancellation of Louboutin's US trade mark registration.
Du Plessis says the US decision was taken on appeal and the appeal court held on 5 September 2012 that the lower court had been wrong in holding that a single colour cannot be registered as a trade mark for shoes in the USA. However, she explains that although the court ruled that the trade mark registration was valid, it also reasoned that it had to be limited to 'uses in which the red outsole contrasts with the colour of the remainder of the shoe.
"This meant that both parties could claim victory. Louboutin applauded the fact that his registration had been upheld, and YSL crowing that it could continue selling its' red shoes," says du Plessis.
With regards to Louboutin's trade mark registration for red-soled shoes, du Plessis says the appeal court pointed out that single colours have been registered in other industries, for example pink for insulation in the name of Owens-Corning, and a green gold colour for a dry cleaning press pad.
"The appeal court said that the law in the US is quite clear: a colour can be registered provided that it is not functional and provided that it has acquired a secondary meaning. The court also felt that there was nothing unique about the fashion industry," says du Plessis.
Du Plessis explains that 'Secondary meaning' means that the colour must have come to denote origin. "The crucial question in a case involving secondary meaning always is whether the public is moved in any degree to buy an article because of its source," she says.
According to du Plessis, the court felt that Louboutin had done enough to create a secondary meaning, stating that in their views, Louboutin's marketing efforts around the red sole had created a brand with worldwide recognition.'
However the appeal court did feel that the secondary meaning was limited. "The appeal court said that the Louboutin mark is closely associated with contrast, and concluded that Louboutin has not established secondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts with the "upper" of the shoe - hence the win-win situation," says du Plessis.
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