Louboutin wins trade mark appeal over red soles

12/09/2012

IP & IT analysis: An appeal launched by fashion designer Christian Louboutin in the United States has overturned a previous ruling that a single colour could not warrant legal protection, thereby enforcing its trade mark for the colour red in the shape of a shoe sole. Anna Kurian Shaw, counsel, Lovells US LLP and Sahira Khwaja, partner, Hogan Lovells International LLP respectively outline both the US and UK implications of this decision.

Original news
USA/France: Shoemaker Louboutin wins exclusive right to red-soled heels
Wall Street Journal, 6 September 2012: French shoemaker Christian Louboutin SA has won the exclusive right to use the colour red to coat the soles of its high-heeled shoes (except when the shoe itself is red) in the second US Circuit Court of Appeals. Louboutin sued fashion house Yves Saint Laurent (YSL) in 2011 after the latter announced plans to introduce a new line of 'monochrome' women's shoes. The court found Louboutin had the right to trade mark protection for its red soles, as long as they contrasted with the rest of the shoe. The ruling therefore fell short of preventing the manufacture of YSL's red-soled, monochrome shoe. 

What's the background?
The initial injunction in April 2011 saw Louboutin sue Yves Saint Laurent (YSL) for alleged trade mark infringement when YSL created a pair of red shoes which sported red soles, like those on Louboutin's shoes. However, in a controversial decision, the District Court judged that Louboutin's red sole did not warrant legal protection, stating 'the Court cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trade mark for the use of a single color for fashion items'.
This decision has now been overturned by Louboutin's successful appeal to the US Court of Appeal for the Second Circuit, which found that, in instances where the red sole contrasts from the rest of the shoe, Louboutin's trade mark red sole was sufficiently distinctive to warrant trademark protection.

What does this case tell us about the current status of trademarks represented as colours in the US?
Anna Kurian Shaw (AKS): The Louboutin decision affirms the availability of trade mark protection for single colour marks in all industries, including creative and artistic industries, such as the fashion industry--protection for single colour trade marks in the United States is alive and well.

How does the position in the UK differ from the US?
Sahira Khwaja (SK): Colour marks already enjoy protection in the UK, provided they act as a badge of origin. Colour marks should identify the colour in a sufficiently clear and precise manner, eg by referring to pantone codes. As you might expect, case law in the UK is developing differently. For example, one key issue in relation to colour marks which is currently the subject of a reference to the CJEU, is whether enhanced reputation through use of a mark in a specific colour may be taken into account where the mark is registered in black and white and purports to claim all colours.

The Laboutin appeal relied heavily on consumer surveys. What is the current position with survey evidence in these types of cases in the UK?
AKS: The importance of consumer surveys can vary from circuit-to-circuit in the United States. For example, courts in the Second Circuit, including the district court for the Southern District of New York where the Louboutin case was first filed, have placed a certain amount of importance on consumer surveys, and have even found the failure to introduce survey evidence, in certain instances, to be relevant to the likelihood of confusion analysis. Other circuits, on the other hand, have downplayed their importance.
SK: Consumer surveys may be admissible in the UK as evidence of reputation, but not as evidence of confusion. Permission is required from the court to adduce survey evidence before the survey evidence may be presented to the court. The UK courts tend to take a very cautious approach to survey evidence and often give it a fairly low weight.

What practical pointers could lawyers give their clients who wish to register a colour trade mark, in the context of the fashion industry, in the UK?
AKS: In the US, the decision illustrates the importance of undertaking efforts to acquire distinctiveness through use, advertising and promotion. In reversing the district court's decision to the extent that it denied protection to Louboutin's contrasting red sole trademark registration, the Second Circuit noted the extensive efforts Louboutin had undertaken to acquire secondary meaning in the red sole design.

Would that advice differ for the registration of a single colour mark, in the context of the fashion industry, in the UK?
SK: In the UK, it would also be very important to establish that the colour has acquired distinctiveness through use so that it may function as a trade mark rather than, for example, as a decorative element. In a recent UK IPO decision on Cadbury's purple colour mark, in an opposition by Nestlé to that mark, Cadbury conceded the mark was not distinctive per se but contended it had acquired distinctiveness through use. The UK IPO decided the evidence filed by Cadbury (which included survey evidence showing 44% unprompted association between the colour and Cadbury) showed the mark had acquired distinctiveness in relation to chocolate per se, ie in bar and tablet form and also drinking chocolate. This decision shows the scope of protection afforded to a single colour trade mark in the UK will be strictly interpreted but that it is nonetheless possible to obtain. The decision has been appealed to the High Court and a decision in the appeal is pending.

The amicus briefs from other fashion houses indicate the importance of this decision. Is the fashion industry a trend setter in IP?
AKS: Given the importance of brand loyalty/image and design in the fashion industry, it is no surprise novel trade mark and copyright-related issues crop up here. At the same time, numerous commentators have argued fashion design is not sufficiently protected under US law, a point the Second Circuit referenced in its decision. This tension creates an environment where IP owners are seeking to protect their valuable assets and may, in some instances, have to push the boundaries of traditional IP protection available in order to successfully do so. For example, in the Second Circuit's decision, the court in a footnote pondered whether copyright protection for the red sole design, instead of trade mark protection, would have been the appropriate mechanism for Louboutin to bring its claims.

How will this affect practice in the UK?
SK: Broader protection is available to designs in the EU through design law compared with the US, so the same issues that arose in this case do not arise here. The fashion industry has taken advantage of this and numerous Community design registrations are made in the name of fashion companies each year.
Interviewed by Laura Cordell. 
The views expressed by our Legal Analysis interviewees are not necessarily those of the proprietor. 
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