Seeing Red: Christian Louboutin v YSL - will Australia follow the US trade mark trend?
Commercial Disputes eBulletin - 26 September 2012
Well-heeled fashionistas know a red soled Christian Louboutin shoe can stand out from the crowd. In a decision that will see brand owners everywhere breathe a sigh of relief, the United States Court of Appeals for the Second Circuit (Second Circuit) agreed, confirming that a single colour can, in the right circumstances, attract trade mark protection. While the Second Circuit's decision in Louboutin's case against fashion rival Yves Saint Laurent is perhaps unsurprising to those familiar with the shoe maker's famous red sole, the circumstances in which single colour trade mark protection will be available remain relatively limited, especially in Australia.
The case, Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., centred on Christian Louboutin's (Louboutin) assertion that by selling monochromatic red-coloured shoes (i.e. red shoes with red outsoles), Yves Saint Laurent (YSL) infringed Louboutin's trade mark in its renowned red-lacquer outsoles on its high-fashion shoes.
The Second Circuit decision
After considering Louboutin's lengthy and prominent use of the lacquered red sole, the Second Circuit ruled that a single colour could be used as a trade mark in the fashion industry, booting a lower court's finding that Louboutin's trade mark on red-soled shoes was likely invalid and protecting a significant type of trade mark for fashion designers and brands generally.
In reaching its decision, the Second Circuit found that Louboutin's red outsoles had acquired secondary meaning as a distinctive symbol that identified Louboutin. In this regard, the Court referred to evidence of Louboutin's advertising expenditure, media coverage, and sales success which demonstrated that the fashion house had, through use of the red sole, created a brand with worldwide recognition. The Court stated:
"Louboutin [had] created an identifying mark firmly associated with his brand which, 'to those in the know,' 'instantly' denotes his shoes' source." (778 F. Supp. 2d at 448)
However, in what may be seen by some as a victory for fashion, the Second Circuit also determined that Louboutin's trade mark covered only a contrasting red sole, meaning YSL could continue to produce and sell its own monochromatic shoes, even in red.
While many in the international fashion industry will be head over heels with this decision, trade mark owners should hold off popping the champagne just yet. Louboutin recently lost a similar case against fashion chain Zara in the French courts. Closer to home, Australia's history of registering and protecting single colour trade marks is sporadic at best.
Readers may recall the much publicised decision of Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8), which denied Cadbury exclusivity over the colour purple with respect to the sale of chocolate.
Mars Australia had more success in registering a distinct, bespoke colour purple with respect to Whiskas cat food. In Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société de Produits Nestlé SA, which can be regarded as an exception to the general rule, Mars was able to demonstrate that the colour of the trade mark was created for the Mars group in Europe “from scratch”. Mars also adduced substantial evidence of its use of the Whiskas purple in Australia over a period of almost 10 years prior to the judgment in the case, demonstrating that "Whiskas purple" had been extensively promoted and advertised both prior to and after the priority date.
Likewise, Veuve Clicquot successfully registered a particular shade of orange with respect to "champagne and sparkling wines" due to the extent to which Veuve had used the mark, before the filing date, both in advertising material and on champagne labels. This court found that this use was sufficient to distinguish Veuve's product from the champagnes and sparkling wines of its competitors.
History also suggests that Australian trade mark owners have greater success in registering "combination" rather than "single colour" trade marks, such as the yellow and black combination utilised by the Commonwealth Bank. Such marks are typically more able to distinguish a trade mark owner's goods and services from those of its competitors than in the case of a single colour mark.
Ultimately though, the question of whether a particular colour or colour combination is so inextricably linked to a brand as to warrant trade mark protection will depend almost entirely upon the facts.
Despite this, the common thread amongst the US and Australian decisions is the question of distinctiveness. Just as Louboutin was able to demonstrate that red soled shoes have been a defining feature of his brand since 1992, Whiskas' Australian victory centred upon the fact it had invested significant sums of money "creating" a new colour purple.
Brand owners seeking trade mark protection over colour would therefore be well advised to adopt a singularity of purpose when it comes to colour. The more unique and precisely specified the colour, and the more consistently promoted the colour branding, the more likely it will find recognition by the public and therefore protection by the courts.
Scott Traeger | Senior Associate
Ashlea Hawkins | Lawyer
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