The ability to protect colour has always been an intellectual property topic of conversation with colour trade marks differing from the colour of a brand. While a TM or ® symbol may appear on an image of a brand, it does not necessary indicate that there are legal rights in and to the colour(s).
Colours can function as indicators of source and, over time, many colours acquire distinctiveness. When thinking of the colour purple in relation to chocolates, Cadbury easily comes to mind. Or the colour combination of red and white in relation to soft drinks invokes an image of a cold Coca Cola. In light of this, it is easy to see how brands can benefit from trade mark protection for distinctive colour(s). However, protecting such distinctive colours is, in no manner, an easy task as can be seen from contrasting decisions of the "Chinese red" (Pantone 18‑1663TP) used by Christian Louboutin on the soles of its shoes.
In the United States, the Second Circuit Court of Appeals ruled that Christian Louboutin does, in fact, have a valid trade mark in "Chinese red" for use on the soles of shoes (provided that those shoes are not monochrome red). Interestingly, the Court of Appeals held that although the trade mark had acquired secondary meaning in the specific context of the fashion industry, Christian 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. Therefore, the Court of Appeals instructed the USPTO to limit the trade mark to uses which the red sole contrasted with the remainder of the shoe – with that limitation the trade mark would be entitled to protection.
In Europe, the Court of Justice of the European Union (CJEU) held that the "Chinese red" trade mark was valid as it does not relate to a specific shape of sole for high-heeled shoes (since the trade mark description expressly excluded the contour of the sole from trade mark protection) and is intended purely to show the specific red colour. The CJEU concluded that where the main element of a sign is a specific colour designated by an internationally recognised identification code, that sign cannot be regarded as consisting 'exclusively' of a shape.
In contrast, the High Court of Delhi in India held that in terms of the Trade Marks Act of 1999, a single colour is incapable of being a trade mark and as such, Christian Louboutin may not claim an exclusive right over the single "Chinese red" colour on this basis.
The Christian Louboutin case clearly highlights the complications that often accompany attempts to obtain trade mark protection in and to a single colour, as applicants attempting to register a colour mark are required to demonstrate acquired distinctiveness in that the colour is seen as an indicator or origin and has, as a result of significant use, become associated with a specific product(s).
Notwithstanding the unique nature of the fashion industry and difficulties experienced, Christian Louboutin may have reasonable prospects of securing trade mark protection in and to the "Chinese red" trade mark in South Africa, provided that the application is sufficiently limited, for instance to the particular Pantone colour 18‑1663TP. It will be interesting to see whether Christian Louboutin is successful here but for now the cases in the United States, Europe and India serve as a reminder of the difficulties in obtaining valid trade mark protection for a colour, even when a trader has used it extensively and acquired a reputation associated with it.
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