SOURCE: ipindia.nic.in (Indian Trademark Registration Number: 1922048)
Color has always been one of the most
important aspect of fashion brands. In fashion industry color is known to
impart a meaning to the design. It is many times the color that gives the
unique identity to the fashion products. Christian Louboutin’s ‘Red Sole Shoes’
are not just shoes but a fashion statement for women around the globe. According
to Louboutin, who has painted the soles of his shoes red since 1992, ‘red implies sensuality -- and serves as a
crafty, subtle branding tool. I selected the color because it is engaging,
flirtatious, memorable and the color of passion.’[1]
The question of acquiring rights over a color
is a fascinating battleground between courts and international brands, with
different squads playing with different rules. The recent one to join the
league is Christian Louboutin Red Sole case in the European Court of Justice
(ECJ). The center of the controversial Christian Louboutin Red Sole Case in the
European Court of Justice (ECJ) revolves around one important question, which
is, ‘Can a designer be allowed to have exclusive rights over a color?’.
Also, the color ‘Red’ in question
here is one of the most popularly chosen colors in the fashion world. ‘Red’ is
the color of fire and blood, so it is associated with energy, war, danger, strength,
power, determination as well as passion, desire and love. Red as a colour is
used in fashion to strongly bring images to the foreground. It is used as an
accent color to stimulate people to make quick decisions.[2]
The European Union (EU) Court’s Advocate
General Maciej Szpunar in his opinion specified that the trademark of Christian
Louboutin, Pantone18 1663TP, was a combination of color and shape, and
therefore, could be refused or declared invalid on the grounds of EU trademark
law. He also noted that his analysis relates exclusively to the intrinsic value
of the shape and take no account of attractiveness of the goods flowing from
the reputation of the mark or its proprietor.
Since the time Louboutin grabbed his
assistants red nail polish and applied it to the outsole of a shoe because he
disliked the design a quarter century ago, red sole became his signature design
for all the shoes manufactured under his mark.
The primary goal of trademark law is to
protect consumers from being confused about the ‘origin and quality of the
product’ and giving a unique identity to the goods. Color Trademarks is a
point of discussion in different countries, each one dealing with the issue
differently. In the marketplace today, colors are playing a very important role
in the world of fashion. Sometimes the distinctive feature in a design is
conferred by color. Article 15 (1) of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) redefined the definition of trademark law
to encompass ‘any sign...capable of distinguishing the goods or services of
one undertaking from those of other undertakings’. This allowed a
non-conventional trademark i.e. Color category to be given trademark
protection.
Therefore, what is tested while giving
exclusive rights in cases like these is how closely related is the specific
color to the design? And whether the relevant consumers are capable of
instantly recognizing the color being uniquely associated with the design or
not? Details of different jurisdictions dealing with the issue of Color
Trademark is discussed below:
- UNITED STATES OF AMERICA (USA): In the case of Qualitex
Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) the US
Supreme Court held that colors alone can be registered as trademark. The
trademark owner must show that the trademark color has acquired
substantial distinctiveness, and the color indicates source of the goods
to which it is applied. Tiffany Blue is one of the most popular examples
of a color trademark.
Christian Louboutin has a valid trademark
protection over its red sole in USA. However, in 2016 case of Christian
Louboutin v. Yves Saint Laurent, the Second Circuit Court of Appeals
specified that Louboutin’s trademark is for those situations in which the red
lacquered outsole contrasts in color with the adjoining “upper” of the shoe.[3]
- Switzerland: In Switzerland, abstract
colors may be registered as trademarks, particularly in case of acquired
distinctiveness through use. However, depending on the goods at issue,
some colors—such as primary colors—strictly belong to the public domain
and can never acquire distinctiveness through use given their absolute
indispensability to the public for use in commerce.
The Swiss Federal Institute of Intellectual
Property rejected Louboutin's trademark's extension to Switzerland in 2011. In
February 2017, Swiss courts turned down a final appeal by Louboutin to
trademark its red-soled heels there, finding that the red soles are merely an
aesthetic element. The courts further noted that the fact that the brand has
won the battle for trademark status in other markets including China, Australia
and Russia did not mean the shoes should enjoy the same status in Switzerland.[4]
- CHINA: In accordance with the
Trademark Law of the People’s Republic of China, effective May 1, 2014,
any visually perceptible sign, including color combinations, capable of
distinguishing the goods of one party from those of others is eligible for
registration as a trademark. Hence, color combination marks are
registrable as trademarks and service marks in China.[5]
- AUSTRALIA: In Australia, a specific
shade of color, or combination of colors, can be registered as a trade
mark. However, the process of registration can be difficult and requires
significant evidence of use, particularly for single colors. Cadbury has
successfully trademarked Pantone 2685C ‘Cadbury purple’.
Louboutin filed a trademark application for
its red soles, specifically Pantone No 18.1663TP applied to the sole of a shoe.
The application was accepted on the provision of evidence of
distinctiveness/secondary meaning.[6]
- India: The definition of a mark
under the Trademark Act includes a particular color or ‘combination of colors’ and therefore it
can be construed that colors can be protected in relation to goods and
services under the Trademark Act. Section 10 of the Act states that a
trademark can be limited to a particular color or combinations of colors.
However, such limitation as to color will only be allowed on determining
the distinctive character of the mark.
In India, single colors or shades of colors have attracted attention
of the business community in recent times. The Trademark Act, 1999 does not
specifically provide for the registration of a single color, although it does
not expressly exclude the notion. Prima facie in practice, a color combination
stands a better chance of registration. A single-color faces certain obvious
hurdles in order to get itself registered. Reason being a single color is never
inherently distinctive. However, various proprietors have filed a trademark
application for single color and few such proprietors have obtained
registration over the same. The criteria for getting registration remains the
same i.e. they can be registered when they become distinctive by extensive use and
acquiring secondary meaning. Details of few single color registered trademarks
as per the records of the trademark registry is given below:
Sr. no.
|
TRADEMARK
|
APPLICATION DATE
|
CLASS
|
PROPRIETOR
|
1394234
|
 |
October 19, 2005
|
8
|
VICTORINOX AG
|
1462270
|
 |
June 19, 2006
|
9
|
DEUTSCHE TELEKOM AG
|
Louboutin holds a valid trademark in India. In
December 2017 Louboutin was awarded INR 10,00,000 (USD 15380 approx.) in
damages and a permanent injunction against two shoe dealers — Kamal Family
Footwear and Adra Steps — for infringing on the trademark in India. Also,
Louboutin’s ‘red sole’ shoes were declared as a well-known trademark by the
Delhi High Court in India.
- Japan: From 2015, color marks became
registerable in Japan. On April 25, 2014, an amendment to the Trademark
Act of Japan was enacted, introducing the protection of non-traditional
marks. Under the amended Trademark Act, “any character(s), figure(s),
sign(s), three-dimensional shape(s) or color(s), or any combination
thereof, sound(s), or other(s) specified by a Cabinet Order, which is
perceptible with human sense” will be protected as a trademark. Under
this new definition, a “color per se” mark and a combination of colors
without delineated contours gets protected.[7]
- EUROPEAN UNION (EU): Article 4 of Council
Regulation (EC) No. 40-94 of 20 December 1993, relevantly states that any
Community Trademark may consist of "any signs capable of being
represented graphically...provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of
other undertakings". In Libertel Groep v Benelux Merkenbureau
(case C-104/01) May 6, 2003, the ECJ held that graphical representation
preferably means by images, lines or characters, and that the
representation must be clear, precise, self-contained, easily accessible,
intelligible, durable and objective. This definition generally encompasses
color marks, and therefore an applicant for a CTM or a national trademark
in the EC may define their color trademark using an international color
code such as RAL or Pantone. In most cases, a color trademark will be
registered only after an enhanced distinctiveness through use in the EC
has been proved. Color combination marks have been recognized in several
General Court judgments, including BCS SpA v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
[2009] ECR II-04047 and CNH Global NV v Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (OHIM), [2010] ECR II-05153.
In EU, Christian Louboutin registered his
first trademark in 2000 in France. He filed for EU-wide and international
protection immediately. The procedure with the European Union Intellectual
Property Office (EUIPO) did not run as smoothly. Louboutin applied on 29
January 2010, but on 20 September 2010 the application was rejected by EUIPO´s
examiner for the lack of distinctiveness. Again, in 2011. The Board of Appeal
did not agree with Examination Office´s decision and registered the trademark
(EUTM no: 008845539) on 16 June 2011. But now the registration is again under
threat of getting cancelled following the lawsuit with Dutch high-street chain
Van Haren.[8]
Considering that the European Union (EU)
court’s Advocate General Maciej Szpunar opinion is not binding, it would be
interesting to see how European Court of Justice shapes up the final decision.
A table containing the details of the
registered trademark in each of the above-mentioned jurisdiction can be found
below –
S. NO.
|
APPLICATION NUMBER
|
TRADEMARK
|
COUNTRY
|
DATE OF APPLICATION
|
STATUS
|
|
|
|
3376197
|
 |
USA
|
August 29, 2006
|
Registered
|
|
|
|
1494251
|
 |
Australia
|
June 1, 2012
|
Registered
|
|
|
|
2015-029921
|
 |
Japan
|
April 1, 2015
|
LIVE / APPLICATION / Under Examination
|
|
|
|
008845539
|
 |
European Union
|
January 29, 2010
|
Registered
|
|
|
|
G902955
|
 |
China
|
November 30, 2006
|
Recordal of license finished
|
|
|
|
1922048
|
 |
India
|
February 15, 2010
|
Registered
|
|
[Source: WIPO’s Global Brand Database]
Lastly, a gist of all the information stated above
is summarized in the table below for readers convenience.
COUNTRY
|
COLOR TRADEMARK PROTECTION
|
TRADEMARK PROTECTION FOR
LOUBOUTIN ‘RED SOLE’
|
United States of America (Usa)
|
Yes
|
Yes
|
Switzerland
|
No
|
No
|
China
|
Yes
|
Recordal of license finished
|
Australia
|
Yes
|
Yes
|
India
|
Yes
|
Yes
|
Japan
|
Yes
|
Under Examination
|
European Union (Eu)
|
Yes
|
Yes
|
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