Posted by Christina Ilinkovski
The United States District Court in the Southern District of New York recently handed down its decision that denied famous fashion shoe designer, Christian Louboutin S.A., Christian Louboutin, L.L.C. and Christian Louboutin's (together Louboutin) motion for a preliminary injunction against the fashion house Yves Saint Laurent (YSL).
In 2008, Louboutin obtained registration of a lacquered red sole as a trade mark in relation to 'women's high fashion designer footwear' in the United States (Red Sole Mark). Louboutin accused YSL of marketing and selling shoe models in YSL's Cruise 2011 collection that used 'the same or a confusingly similar shade of red as that protected by the Red Sole Mark'. Specifically, Louboutin took issue over four shoe designs that featured in the collection: the Tribute, Tribtoo, Palais and Woodstock models, which all had red soles similar to Louboutin's Red Sole Mark.
As YSL refused to withdraw the challenged models from the market, Louboutin commenced proceedings claiming trade mark infringement, counterfeiting, trade mark dilution and unfair competition. YSL filed a counter-claim seeking cancellation of the Red Sole Mark on grounds that it is not distinctive and that it is merely ornamental or functional.
At the outset, Judge Victor Marrero recognised that Louboutin diverted from industry custom when he came up with the idea in around 1992 to colour the outsoles of his high fashion women's shoes in a glossy red nail lacquer. Louboutin himself stated that he chose the colour red because he regarded it as 'engaging, flirtatious, memorable and the colour of passion'. Judge Victor Marrero further acknowledged that Louboutin's shoes have become so famous worldwide that the fashion savvy can immediately identify a pair of shoes as the Louboutin brand simply from the red outsole. He described it as 'a product visually so eccentric and striking that it is easily perceived and remembered'.
The dispute between the two fashion leaders centred on whether Louboutin should be granted the exclusive right to red soles on shoes. Under US law, to succeed on a claim of trade mark infringement, Louboutin must establish that (1) its Red Sole Mark merits protection and (2) YSL's use of the same or a sufficiently similar mark was likely to cause consumer confusion as to the origin or sponsorship of YSL's shoes.
Judge Victor Marrero noted that colour alone may sometimes be capable of trade mark protection where 'it acts as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function'. Where colour is used in a 'functional' sense, meaning it is essential for the use or purpose of the product or where it affects the cost or quality of the product, it is not protectable. Specifically, in the American fashion industry, the use of colour in a trade mark has only been upheld where it resides in distinct patterns or combinations of shades so as to manifest a conscious effort to portray a uniquely identifiable mark embedded in the fashion item (e.g. the widely recognised Louis Vuitton monogram using 33 bright colours, or the Burberry check pattern).
In discussing the role that colour plays in the fashion industry, his Honour discussed the uncertainties created in the fashion industry by the registration of a trade mark for a single colour, particularly as 'in fashion markets colour serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes'. In that respect, he stated that colour performs a creative function, including 'to attract', 'to beautify' and 'to stand out', which are non-trade mark functions. As a result, relying on the 'functionality doctrine', the Court stated that the granting of a trade mark for a product's features (such as colour) should be prohibited where competitors will be placed at a significant disadvantage, because the feature is essential to the use or purpose of the item or affects its cost or quality.
YSL argued that a fashion brand should not be granted a monopoly over a single colour as it would stifle competition and diminish the ability to be creative with designs.
Judge Victor Marrero expressed his view that the Red Sole Mark, without any limitation, was too broad and that awarding one participant in the designer shoe market a monopoly on the colour red would impermissibly hinder competition. He concluded 'because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trade mark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning'. The Court therefore concluded that Louboutin failed to demonstrate a sufficient likelihood that its Red Sole Mark merits protection.
The decision has important implications for the fashion industry as a whole. In a narrow sense, YSL and other designers can continue to produce red soled shoes, or soles of any colour for that matter. However, the decision suggests that in the United States at least, fashion designers will struggle to attain registration of single colour trade marks in relation to fashion items.
Under Australian law, similar issues have been raised in cases concerning colour trade marks. While Australian Courts have not refused the possibility of trade mark registrations for a colour, there is also a strong emphasis on the applicant having to demonstrate how that colour is used to identify or distinguish a particular brand. However, the Courts appear to be more readily in favour of trade mark applications for colour combinations.
Partner: Charles Alexander
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