On 5th September 2012 Christian Louboutin has been granted trademark protection for the use of red soles, following the appeal. Previously a federal judge ruled that the colours could not be trademark in the fashion industry.
The decision effectively gives fashion brands the chance to monopolise colours – it will be interesting to see whether other designers will follow the trend.
A bit of history of the case. Louboutin sued Yves Saint Laurent in April 2001, straight after YSL announced their new line of women shoes – China Red, with the same shade of red on the sole. Louboutin tried to prevent YSL from selling the shoes, but the New York federal judge ruled against it.
Now the appeal court granted Louboutin exclusive rights to red soles if they contrasted with the rest of the shoe, because it constitutes vital part of their brand. Summary of the court ruling:
“We hold that the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error.
We further hold that the District Court’s holding, that Louboutin’s trademark has developed ‘secondary meaning’ in the public eye, was firmly rooted in the evidence of record and was not clearly erroneous, and that the Red Sole Mark is therefore a valid and enforceable trademark.”
Lee Curtis, trade mark attorneys at Harrison Goddard Foote, who has been following the case, believe the case proves it is possible for a brand to monopolise a colour through consistent use: “I think one can view this as a major victory for Christian Louboutin as it effectively means he can monopolise the red sole of women’s shoes, what he argued all along. When one says to anyone in the street ‘red sole of women’s shoes’ they usually respond Christian Louboutin and thus in law he can now monopolise this colour. Christian Louboutin has achieved this monopoly through consistent and prominent use of the colour over many years and has educated the public to see the colour as his ‘brand’.”
Brands in other sectors often monopolised colours, think of Cadbury purple, for instance, or BP’s green.
Fiona McBride, partner and trade mark attorney at law firm Withers & Rogers commented on potential benefits for fashion brands: “The instant association of colour with a brand is a lucrative opportunity which adds value to the brand. However, achieving this recognition and being able to protect the colour through trade mark registration is not easy.”
The ruling concludes the progression from style innovation, to style trend, to brand itself, and most importantly, when fashion industry is not exempted from monopolising colours, we will definitely see more designers using specific colours as part of their brand.