International report - "Soled" out: Louboutin is hot on his heels 03 Oct 12
Watermark - Australia
Colour palettes are useful tools in the aesthetic considerations of many fashion designers. However, the US Court of Appeals has found that Christian Louboutin’s "red sole" trademark has acquired the necessary distinctiveness to qualify for trademark protection when used in contrast with the outer upper of ladies' designer shoes. The court limited the rights in Louboutin's "red sole" trademark to uses where the red sole contrasts with the colour of the rest of the shoe.
Louboutin alleged that Yves Saint Laurent’s (YSL's) monochromatic red shoes infringed its registration and sought to restrain YSL from adopting a monochromatic red shoe which included a red sole as part of its 2010 cruise collection. However, the court found that YSL’s monochromatic shoes in various colours (including red) did not infringe Louboutin red sole mark as limited (Christian Louboutin SA v Yves Saint Laurent Am Holding, Inc (US 2nd Cir, 11-3303-cv, 5th September 2012). It was therefore not necessary for the court to consider whether there was any likelihood of consumer confusion or the issue of functionality.
Louboutin is hot on his heels in Australia
As part of his global branding strategy, Louboutin has registered a colour trademark in Australia in the particular Pantone shade 18.1663TP, as applied to the sole of a shoe. The registration covers “ladies heeled formal and dress footwear; ladies heeled espadrilles; ladies heeled dress sandals” in Class 25. As the Australian registration is not limited to a red sole contrasting with the remainder of the shoe, this might make it easier for Louboutin to enforce the red sole mark - even where the entire competitor shoe is red.
However, this case does highlight the real difficulties of obtaining and enforcing a colour trademark.
There are approximately 34 registrations for colour trademarks in Australia in Class 25, of which around 97% are registered for a combination of colours rather than a single colour. It is more difficult to obtain a registration for a single colour than for a combination of colours. This is seen in the number of registrations in Class 25, of which only 3% are registered for a single colour without limitation (as opposed to trademarks registered for a combination of colours, or colours combined with other elements). The marks claiming only one colour are usually restricted in some way, such as use as a device on clothing or a coloured stripe on the soles of shoes.
If you have established reputation in a particular colour in the field of fashion and accessories, this may be registrable as a trademark. Tiffany & Co recently applied for a shade of blue coded "RGB Profile R117 G210 B204", intended as a trademark "applied to the whole visible surface, or being the predominant colour applied to the visible surface of the packaging of the goods" (pending at the time of writing). Presumably Tiffany has established some reputation - in at least some of the items nominated under its application - and may therefore secure a registration in due course (likely based on evidence it can tender).
However, enforcement of such single colour trademarks may be challenging, and only available in limited circumstances.
Returning to the Louboutin shoe scenario, there are certainly many shoe traders selling monochromatic red ladies heeled shoes in the Australian market. Will Louboutin pursue them? This remains to be seen. It may be difficult for Louboutin to stop other shoe traders from adopting a red sole for purely aesthetic reasons (as was the case with YSL), as such use would not amount to "use as a trademark" - a threshold requirement of infringement.
The extent of Louboutin's rights will also depend on the particular shade of red being applied by third parties to the sole of their footwear. Reds which vary from Louboutin's nominated Pantone 18.1663TP may not amount to infringement. You might be surprised at the spectrum of reds falling in the Pantone range. For example, "Poppy Red" (Pantone 17.1664 RX), "Lipstick Red" (Pantone 19.1764TCX) and "Fiery Red" (Pantone 18-1664 TX) are only the tip of the iceberg of around 100 Pantone shades of red. (Allegedly, Louboutin himself would not confirm which shades would be "safe" for competitors to adopt.)
And what of other colours which appear similar to Louboutin's nominated Pantone shade of red - for instance, deep oranges or magentas? Anecdotally, these colours often appear similar, depending on the substrate or medium being employed.
On the other hand, Louboutin's registration, coupled with his readiness to take action against YSL (and traders in other territories, including big players such as Zara) likely pose a commercial disincentive to other high-end shoe traders from adopting red soles - if nothing else, to avoid being dragged into costly legal proceedings with Louboutin over the colour of a sole.
Louboutin’s global branding strategy looks to be expanding, with other red sole device marks (registered and pending) in numerous jurisdictions including the United States, Australia and Europe. Below is a
new Australian 'logo' trade mark (accepted at the time of writing).
This red sole device mark covers a wider range of goods - including shoe care goods (eg, leather polishing creams), sunglasses, watches and jewellery, stationery, bags and travel goods, umbrellas and other accessories. It remains to be seen whether these logos will appear on the shoes themselves, or on other advertising material. Either way, Louboutin appears keen to capitalise on the "red sole" story and build his personal red empire.
If you are a fashion player with reputation in one or more colours for particular goods, it might pay to seek registration of that colour. Likewise, it might be wise to conduct a search to "clear" your product for launch. Such a search would ideally encompass relevant registered colour marks on the Trademarks Register, for clothing as well as related accessories. And if you are in the rag trade (particularly the high-end shoe market), consider your shoe and sole palette carefully - you do not want Louboutin hot on your heels!
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