Christian Louboutin's trade mark cases seem to make the
headlines as much as his red-soled shoes do. In the USA Louboutin
has a trade mark registration for what's described as 'a
lacquered red sole on footwear.' When rival YSL started
selling an all-red shoe, Louboutin sued for trade mark
infringement. The US court found against Louboutin, holding
that his registration was invalid. It said that a colour cannot be
registered as a trade mark in the fashion industry, because colour
plays such a vital role in that industry. In a memorable judgment
the court compared fashion to art and said that, in the same way
that Picasso could not have monopolised the colour blue during his
Blue Period and stopped Monet from using the colour in his
water scenes, Louboutin should not be able to stop other shoe
manufacturers using the colour red in shoes.
An Appeal Court has overturned this decision. It held that fashion is no different from any other industry, and that a colour can be registered as a trade mark if it has in fact become an identifier of source. In the case of Louboutin, it has: 'In the high-stakes commercial markets and social circles where these things matter a great deal, the red outsole became closely associated with Louboutin.'
The court did, however, add a twist, saying that Louboutin's shoes are associated with contrast: ' When Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once.' It therefore said that Louboutin's trade mark registration should be limited to shoes that have a red sole but a different colour applied to the rest of the shoe. The effect of this was that YSL was not infringing the registration. But Louboutin did at least keep his registration.
Colour trade marks are controversial for obvious reasons – a trade mark registration gives the owner the exclusive rights to use the trade mark in its particular industry, yet the rainbow was not very generous. But trade mark law does say that colour can be registered, and there is no doubt that some colours have become associated with certain products. So the authorities try to limit colour trade mark registrations as they did with Louboutin. Another way is to limit the registration to a particular Pantone number.
If you feel that your product is associated with a particular colour you should seriously consider getting trade mark registration for it. It may not be easy - you will need to provide evidence of significant use – but it will be worthwhile if you get it.
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