Can you trademark a colour?
A monopoly on a colour seems an odd thing but yet it has been fought hard for. An analysis surrounding the $1’000’000 case regarding Louboutin’s signature red-soled shoe.
Brands like to ensure they hold legal rights to use unique traits of product branding, with one important trait being colour; Reese’s have trademarked their signature bright orange, UPS an inconspicuous deep brown and Tiffany & Co. with a distinctive light ocean blue shade. However, a brand that had difficulty in trademarking their idiosyncratic shade of red was Louboutin - the Paris-based fashion house, renowned for its iconic red sole high heels. By no means the first company to encounter difficulties with trademarking a colour, Cadbury failed to trademark the shade of blue, Pantone 2685C after repeat claims and appeals since 2004, with Nestle standing as the key opposition. BP also applied to trademark the green Pantone 348C in around 33 countries, but this yet again failing - but why do some companies get to hold legal rights for a specific colour, and some don’t?
From left to right: Pantone 348C (BP) , Pantone B81B36 (Louboutin) , Pantone 2685C (Cadbury)
It depends upon the jurisdiction, whether the shade of colour is particularly distinguishable, and can be easily associated with company goods and services, and whether it infringes upon free competition. I’ll discuss each issue in relation to the various legal plights Louboutin has had to face over the years, with global analysis and insight.
Primarily, the company must take national jurisdiction into account when attempting to trademark specific traits of its branding. This is because different global courts will perceive branding traits to hold varying levels of importance in overall audience perception. An example of this involves Louboutin’s ongoing legal battle in Chinese jurisdictions, involving Article 8 of the Trademark Law. For around a decade, the Chinese Trademark Office (CTO) and China’s Trademark Review and Adjudication Board (TRAB) have assessed Louboutin’s signature characteristic as pertaining to the entire high heel shoe, as opposed to just the shade of red, rendering the trademark ineligible. The Beijing High Court, after implying a potential shift, finally decided to remove the focus from the entire 3D model, to the red sole at the bottom of the shoe. The distinction of whether the trademark would apply to the whole shoe (which would be infeasible due to competitive freedom) or the red lacquered sole. China isn’t the only country to continuously make snap decisions concerning trademarking. India’s High Court of Delhi held that Louboutin owned the trademark for Pantone B81B36 in December 2017, only to reverse this decision six months later. In July 2018, the Court served an injunction against Indian brands using the distinctive red sole, thus rendering Louboutin as the legal holder of rights to use their iconic shade of red. Not only is this flip-flopping unfair for commercial brands to progress further in creating their branded message for a wider audience, but it also means other brands can continuously exploit, with inconsistent application of the law providing varying degrees of consequence.
The trademark will only take effect when it is recognisable by the general public or holds ‘enhanced distinctiveness’ in the eyes of the consumer.
Closer to home, the European Courts of Justice enforce Directives for trademarking and other areas of commercial intellectual property law fall under Directive 89/104/EEC, which is enforced throughout all member states. The trademark will only take effect when it is recognisable by the general public or holds ‘enhanced distinctiveness’ in the eyes of the consumer. Cadbury’s purple could not be trademarked in the U.K. for this reason (Société des Produits Nestlé SA v Cadbury UK Ltd [2017]). Swimming back out to shore, and through the Atlantic Ocean, Louboutin had their biggest lawsuits seen in North America, both with the United States Trademark and Patent Office (USTPO) and independent brands of a similar nature. Whilst the traditional red sole first came about in 1992, Louboutin didn’t seek a trademark in the States until 2001; it failed to meet descriptive standards accepted by USTPO, and was eventually abandoned and seen as invalid (Diagram below). Another failed attempt was seen in 2006, but the brand saw success after submitting a 3D image of the ‘lacquered red sole’ in the context of a high heeled shoe, and it was officially recognised as a trademark going forward.
This is where we can begin to observe legal actions relating to the infringement upon free competition, and most importantly, the use of a protected trademark. Fashion brands are frequently seen raising lawsuits against other brands for using something they believe belongs to them - i.e. Versace and Fashion Nova are still in the midst of a lawsuit regarding J-Lo’s jungle catsuit dress, and whether the function and appearance are too synonymous. As stated by Andrea Davey, senior vice president of marking at Tiffany & Co., “it is a rare and enviable position [in which] consumers recognise the brand simply by seeing the colour - even without any other brand identity”, and it is for the brand to prove that consumers visualise such secondary meanings with that company.
“a single colour, standing alone, could almost never be inherently distinctive because such marks do not automatically tell a customer that it refers to a brand, but rather, over time, customers come to treat a particular product colour as signifying a unique source”
One example of Louboutin’s lawsuits involves claims against Yves Saint Laurent, raised in 2011, after their release of a suede red heel. Louboutin argued this was an infringement of their trademark and fair competition, as well as an attempt of counterfeiting, false designation of origin and dilution of the trademark. YSL responded with a counterclaim, to essentially remove their signature red sole trademark. The circuit court of appeals in the U.S. specifically stated that the signature bright red was ‘certainly not distinctive’, relying upon a quotation from Qualitex v Jacobson Products Co. [1995], “a single colour, standing alone, could almost never be inherently distinctive because such marks do not automatically tell a customer that it refers to a brand, but rather, over time, customers come to treat a particular product colour as signifying a unique source”. The case ended in the U.S. District Courts limiting Louboutin’s trademark to instances where the sole contrasts the colour of the shoe itself (i.e. the distinctive red and black, or red and nude). This enabled YSL to continue selling their all-red suede shoe without breaching the rights of Louboutin.
Whilst Louboutin is merely identified by one colour, the bright red at the bottom of the shoe, some brands have tried to trademark multiple colours within one logo. An American tools company, Forney, have tried to trademark a colour scheme involving a bright gradient, a black bold line, as well as a small chequerboard border (displayed below):
After multiple appeals to different U.S. boards and bodies, the Federal Circuit (whose precedent is followed by USPTO and other vital U.S. trademarking bodies) allowed Forney to trademark the colour scheme, further enabling companies to branch out and distinguish themselves in various ways.
Whilst fashion has been making waves in the legal trademarking world, the makeup world is in particularly troubled waters. The industry is valued at over $50 Billion, with hundreds of companies selling different versions of the same product. Indie companies who are attempting to escape the preset mode include Glossier, a company who filed to trademark a light bubblegum pink within their packaging at the start of 2020. In the application of this, the company relied upon Louboutin’s existing trademark in the States - thus making a convincing case. You can see the trademarked packaging design below.
Glossier’s legal team argued that the light pink shade contrasts with the white external packaging, similarly to how Louboutin’s red contrasts with the outer black or nude shade. As you can imagine, there are only so many products an individual needs in their makeup bag, thus making lipsticks, powders and shadows difficult to legally define as one's own. The solution to this revolves around eye-popping packaging, including Rihanna’s trademarked honeycomb packaging, Morphe’s sleek black structure and Jeffree Star’s taboo palette and shade names.
The desire to receive recognition for one's work is one most people can relate to. The efforts of LV and other companies to trademark the characteristics of their products however goes beyond the innate want for simple recognition, it is a desire to yield competitive edge over other brands that are smaller or independently owned. It means powerhouse consumer brands can continue to exploit and constrain less lucrative companies by limiting greater creativity through external fear of the full force of the law - coupled with an extensive fee of reputation reparation if the big brands reap success. It’s also bad news for the consumer, as seen with (nearly) extortionate prices for unique detailing on designer products - it is the trademark that maintains these prices as the items are unavailable elsewhere. In essence, the legal grounds of IP continue to maintain the widening disparities caused by intense consumerism and toxic materialism. Simultaneously, the inaccessibility of certain trademarks is evident and restrictive, therefore demonstrating the intention of the legal system to maintain a regulated but free system of produce, supply and demand