In a recent victory for French design house Christian Louboutin, a New York appeals court has ruled that Louboutin can trademark its shoes’ iconic red sole since it is a defining feature of an authentic Louboutin product.
In the case of Christian Louboutin v Yves Saint Laurent, appellate court justices José Cabranes, Chester Straub, and Debra Livingston reversed in part the lower court’s decision that Louboutin could not trademark the colour red on the grounds that a colour can serve as branding and thus have a “secondary meaning in the public eye.” See the IPilogue’s previous coverage of this issue here, here, and here.
“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,” the judgment reads. “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand [..] and is therefore a distinctive symbol that qualifies for trademark protection.”
This comes after the lower court denied Louboutin’s request for an injunction that would require rival fashion house Yves Saint Laurent (YSL) to stop manufacturing its monochromatic red platform shoe. Though the appeals court allowed Louboutin a partial win, it did uphold the lower court’s finding that an entirely monochromatic red shoe from a competitor does not infringe upon Louboutin’s trademark rights.
Under the Lanham Act, which sets out U.S. trademark law, the “test for trademark infringement is whether the mark creates a likelihood of confusing customers as to the source of the product.” As such, it seems reasonable that Louboutin would be granted sole authority to manufacture a shoe bearing its signature style. However the court limited Louboutin’s “Red Sole Mark” as per section 37 of the Lanham Act, which gives the court power over trademark registration. This means the Red Sole Mark prescribed by the court is limited “to a red lacquered outsole that contrasts with the color of the adjoining ‘upper’.” In other words Louboutin cannot trademark the colour red, nor can they claim a particular shade of red as its logo--which still allows for the possibility of knock-offs. That means competing brand YSL has the right to manufacture its Louboutin look-alike because it does not contravene the Red Mark Sole limit as set out.
In Canada, colour can be claimed as a feature of a particular trademark and thus protected if that specific colour is held to be distinctive; colour alone cannot satisfy the application for a trademark and no entity can claim an exclusive right to it. This follows Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (1987) in which the Federal Court of Canada found that colour, in conjunction with other defining features such as shape and size, could qualify as intellectual property.
Similarly, the Louboutin judgment cited Qualitex Co. v Jacobson Products Co. in which the court found that Jacobson’s green and gold-coloured dry cleaning pads infringed on Qualitex’s original trademarked product. The 1995 judgment stated that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark” because it “can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function.” This means Louboutin cannot claim exclusive rights to shoes manufactured in red specifically because the colour of the entire shoe is not a defining feature of it.
This triumph-in-part could mean further ambiguity in the interpretation of trademark law; both Louboutin and YSL won in part for the right to manufacture shoes of a certain style. This means that by analogy either interpretation could be used to support a future case for/against a particular trademark by applying colour as a defining feature, or to defend a claim of unfair competition.
Since trademarks must adhere to national legislation, jurisdiction is also of increasing importance. By logic of the Louboutin case, would a claim for trademark rights filed in a jurisdiction with a more narrow interpretation of the law adhere to this decision? And if so, could that lead to a transnational approach to trademarks that pays heed to how quickly information travels in the digital age? While these questions are merely speculative, they do suggest a plausible change in the way trademarks are governed.
Terrine Friday is a Graduate Student Member of IP Osgoode and an LLM candidate at Osgoode Hall Law School, where she researches issues related to intellectual property and human rights.