A colourful judgement

On 5 September 2012 the US Court of Appeals, 2nd Circuit, handed down a judgement stating, in essence, that a single colour can serve as a trade mark in the fashion industry in the United States of America.

As an introductory note, for a mark to qualify for protection as a trade mark it must be distinctive. In other words, a mark applied to products or used in relation to services must serve as an indication of the origin of those products or services.

This case involves two renowned fashion houses, being the celebrated woman's high-fashion shoe designer, Christian Louboutin, and the rather more than famous Yves Saint Laurent (YSL). The difference between these brands is that YSL is known by its name "Yves Saint Laurent" whereas Louboutin's shoes are instantly recognised by their bright lacquered red outsoles.

Louboutin introduced his signature footwear to the fashion market in 1992, painting high-gloss red lacquer on the outsole of his footwear designs. In 2008, he registered the red lacquered outsole as a trade mark in the USA, thereby obtaining the exclusive right to use lacquered red as a trade mark on the outsole of shoes*. So, when YSL commenced marketing and selling a monochrome red shoe with a red sole, Louboutin saw red, reacting by lodging formal proceedings in the US District Court for the Southern District of New York against YSL for trade mark infringement based on his registered red sole trade mark. YSL counter-attacked, seeking to cancel Louboutin's registration. YSL claimed that the trade mark should be cancelled because the mark is not distinctive and the colour red on an outsole of a shoe was functional in the fashion world. YSL's main contention was that if Louboutin is afforded the exclusive right to use red on the outsole of a shoe, all fashion designers would have one less colour on their palettes to paint with.

When the case was initially heard, the District Court held that a single colour could never serve as a trade mark in the fashion industry, ruling in favour of YSL. The effect of this judgement was that, if you spent significant time, money and effort to promote your fashion brand under a single colour, you could not seek trade mark protection even if consumers indentified your brand by that colour. Of course, many fashionistas were troubled by this decision. The famous jewellery brand, Tiffany & Co, was one of those concerned, fearing that its prominent robin's-egg blue trade mark registration would be vulnerable to attack. In January this year, as expected, Louboutin (together with Tiffany) brought an appeal against the decision.

The primary question the US Court of Appeals was faced with was whether or not a single colour could qualify as a trade mark in the fashion industry and, in particular, as the signature of high fashion women's footwear. In a welcomed judgement, the Appeals Court concluded that the US District Court had slipped up, stating that Louboutin's red sole trade mark, has through years of use and advertising, become a distinctive symbol that indentifies the brand. However, the Court qualified this by stating that Louboutin's red sole trade mark only extends to instances where the remainder of the shoe is designed in a contrasting colour or pattern. YSL was not completely disappointed with the outcome of the case because, even though the Appeals Court confirmed that Louboutin's registered trade mark was valid, it held that YSL had not infringed the registered mark. The monochrome design employed by YSL was not use of Louboutin's trade mark because YSL had not painted the outsole of its shoe in red to contrast with other colours.

In summary, a single colour can be registered as a trade mark in the US if it is distinctive.

In South Africa, the position is less certain, as seen in the Cadbury Ltd v Beacon Sweet & Chocolates (Pty) Ltd decision. Although, colours, by definition, can qualify as trade marks in South Africa, if the marks have, through use, become distinctive, any person who attempts to register a single colour faces many hurdles. The requirements in the Trade Mark Registry's guidelines must be adhered to. Not only must the applicant prove that the mark, in a specific manner of use applied to an article or in relation to a service, is distinctive but the trade mark application must also contain the international colour codes (pantone codes) and a representation and description of the exact form in which the colour will be used on the goods or in relation to the services. In practice, it has been extremely difficult to satisfy the Trade Marks Office that a single colour mark is registrable.

South African designers are encouraged to protect their colour brands, especially in light of the global trend to recognise and protect colour trade marks, but may expect a hard battle if they try to claim rights in a single colour.


*

An illustration of Christian Louboutin’s registration

An illustration of a monochrome shoe