South Africa: Colour Trade Marks And The Fashion Industry

Last Updated: 24 November 2011
Article by Ilse Du Plessis and Wim Alberts

Most Read Contributor in South Africa, September 2018

Recent news reports dealt with a court case in America relating to the colour of high-heeled shoes for women. Christian Louboutin is said to have registered the colour "red" for shoes as his shoes are known for having red soles (for a depiction see Yves Saint Laurent was said to have infringed his trade mark by using red on the soles of their shoes (which are in fact entirely red). In a preliminary hearing in a New York court, it was decided that Louboutin could not stop Yves Saint Laurent, amongst others, as the colour red was seen to be decorative in the shoe industry.

This raises the question of whether a colour can be a trade mark at all? One must first consider the issue of the registration of colours in general. A colour is an example of an unconventional mark that is different from a normal two-dimensional mark, such as the word SONY. The definition of "mark" in the Trade Marks Act, however, specifically mentions colours, and effect must be given thereto. The Registrar of Trade Marks's practice has been to accept applications for colours on their own, without reference to a device or logo of some kind, and in those instances an applicant would, for example, simply file two blocks containing the relevant colours. This practice was changed after the decision in Cadbury Ltd v Beacon Sweets & Chocolates (Pty) Ltd. In this case, application was made for registration of "the colour purple" in relation to labels or packaging for chocolate. A representation of the colour accompanied the application. Later it was attempted to include an endorsement to refer to a Pantone number, which is an international colour classification system. The judge referred to the decision of the European Court of Justice (ECJ) in Libertel Groep BV v Benelux-Merkenbureau. Here application was made for the colour "orange"and the ECJ said that a single colour could be a trade mark, depending on the context.

In the Beacon case, after referring to the ECJ's statement, the court indicated that a colour cannot, in isolationand without being used in a distinct fashion, constitute a mark. The stated principles were then applied and it was held that the application was simply for the colour purple and that even if the endorsement was allowed, it would not have permitted the application to be registered. As the mark was too vague, without reference to the packaging of the products, it was concluded that it does not qualify as a "mark", as defined in the Act. It therefore seems that the position in our law is that a colour would have to be defined, at the least, in terms of an objective standard, such as the Pantone system, and it would have to be applied in relation to a graphic depiction of some kind, such as an image, line, or character.

With regard to the merits of an application for a colour, the courts are cautious not to allow the depletion of the available colours of the spectrum, and a "monopoly" will not easily be granted. Insofar as a single colour, specifically, is concerned, prior use that would bring about distinctiveness would usually be required. In the Libertel case the following was said:

"In the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific."

One can also refer to a decision of the Kenyan Court of Appeal in British American Tobacco v Cut Tobacco Kenya Ltd. In this matter it was said:

"[I]t has to be observed that the use of the colour red as the predominant colour on a packet of cigarettes is not the exclusive preserve of anybody, including the plaintiff, the colour being a conventional indicator in the tobacco industry of a strong brand of cigarettes."

A contrary finding, staying with the colour red and relating to a less controversial product, is the Australian decision in Fada Pty Ltd (t/a Pacific Coast Eco-Bananas)'s Application. The products, being bananas, were sold with red wax tips. The mark was described as consisting "of the colour red as applied to up to one-third of a banana". Extensive evidence of use was however filed and the application of the colour red in this setting is clearly innovative. A registration for the colour pink also exists for insulation material found in ceilingsand Iinterestingly, Cadbury obtained registration for the colour purple in Australia.

Turning then to the fashion industry in particular, it is clear that where the registration of colours is a controversial issue in general, it will be even more so in the fashion industry. Allowing registration of the colour red for Ferraris would bring about the untenable result of preventing other car manufacturers from producing red cars. Similarly, it is very difficult to imagine a fashion designer being allowed to monopolise a single colour. Obtaining exclusivity in respect of a combination of colours in a particular format will of course be in order, for instance the distinctive red, white and blue combination of Tommy Hilfiger in relation to clothing. There is no general monopoly on the colours red, white and blue, only in the particular arrangement.

Having said that, it is conceivable that in appropriate circumstances, a designer would be able to claim exclusivity in respect of a single colour, particularly, if all of the abovementioned requirements have been met. Applied to Louboutin's shoes, it is submitted that the iconic red soles are not merely decorative but in fact fulfill a very important trade mark function insofar as they indicate the origin of Louboutin's shoes and distinguish them from other women's shoes. The decision of the appeal court is therefore eagerly awaited by both fashionistas and trade mark attorneys alike.

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.

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