The colour palette offers not just the seven colours of rainbow but a wide variety of shades to be spoilt for choice. As Coco Chanel said, “Women think of all colors except the absence of color. I have said that black has it all. White too. Their beauty is absolute. It is the perfect harmony”. Not adhering to the gender specific perspective of the quote, colours do have it all in the fashion world- distinctiveness and well, exclusive rights too.
Product colour, specially in the fashion world can be of utmost importance to the brand, classic examples of the same being Christian Louboutin and their red lacquered outsole, Tiffany and their Tiffany blue box and even the famed fashion doll Barbie and everything Barbie in a shade of pink. Imparting exclusive rights to colours has always been a tricky concept.
Colour trademarking is the concept of registering and reserving a particular colour for a particular brand. It is one of the most prominent non-conventional trademark and rather a very important one in the fashion world.
A trademark is usually the first to be noticed and the last to be forgotten by consumers and in this era of ever raising consumerism, a trademark’s unique feature to distinguish between products and services. Trademarks do help associating certain attributes to a particular brand and do speak volumes about quality, origin and publicity. Even though all of the above are true, a trademark is not meant for granting monopoly to a certain brand. With consumerism growing perpetually and numbers of brands growing in geometric progression, there is bound to an outburst of litigation from companies trying to outdo each other. The traditional trademarks are easy to justify- words, pictures, logos- unique and exclusive. The non-conventional trademarks have it harder. Non-conventional trademarks include colour, shape, sounds, scent and even taste and justifying these get difficult and even if they are, setting the extent till which it needs to be justified gets even more difficult. Among all the yet identified trademarks, the colour trademark is the one in greatest demand.
The colour trademark argument arguably started in 1975. Even though a baby step, it was held by the UK House of Lords that a colour scheme covering the entire surface of a product (a medicinal pill in this case) can be registered as a trade mark. The main reason behind the same was the fact that the colour scheme prevented confusion in the mind of consumers and added distinctiveness. With the enactment of EU’s Trademark’s Directive in 1988 and the enactment of Community Trade Mark regulation 1993, the UK Trademarks Act 1994 was adopted. With the adoption and enactment of these, the European Court of Justice became the first court to address the issue of non-conventional trademarks. Quality, origin and publicity form some of the basic reasons why a unique trademark is necessary. Even though it is never the aim of a trademark to let traders gain monopoly in the market, companies often use them as a tool to help them set a restraint on competition. Not the most ideal but definitely the most used practice. Also, the fact that most of the visual information we tend to intake is colour, the importance of colour in the commercial space gets more aggravated.
With colour being one of the most important feature of a fashion commodity and the first attribute a consumer notices in an item, colour becomes attached to one particular brand.
ENFORCEABILITY OF A SINGLE COLOUR TRADEMARK: PRESENT SITUATION AND HISTORICAL PERSPECTIVE
Testing the enforceability of a trademark hasn’t been an easy task. A number of questions pertaining to non-conventional trademarks were answered in the ruling of the landmark case Ralf Sieckmann v Deutsches Patent- und Markenamtwhichgave rise to the now famous Sieckmann Seven fold test. In the same famous case, it was held by the judge that a trademark may comprise of a sign which is fundamentally incapable of being perceived visually but it is valid if it can be duly represented graphically through images and characters with clear and well-defined lines.
Traditionally, it had been held by the Courts that a single colour cannot effectively function as a trademark. This has been embodied in the rule called the “single colour rule” which was enacted as early as the 1906 and has acted as the single largest deterrent for the registration of a single colour trademark in fashion. Reasons cited for the same includes shade confusion, adequate protection provided by colour in design and traditional approach towards colour. The colour depletion theory came in much later yet much stronger.
The case on this which gathered a colossal amount of publicity is one between fashion giants Christian Louboutin and Yves Saint Laurent, and Tiffany’s little cheer leading spree in the form of an amicus curiae brief on the same.
Christian Louboutin, the brand, is fashion royalty and their signature red outsole an absolute symbol of class. To consider the red outsole as just another attribute in a regular shoes character would be highly unjust. Christian Louboutin is known for its red soles. Christian Louboutin was born in 1963, he actually started dreaming of footwear during his teenage market. He was expelled from school at 16 and he worked for the famed designer Charles Jordan. Come early 1990s, he launched his own footwear line. In 1993, the iconic red lacquered outsole shoes was launched. It is famously reported that Christian Louboutin discovered his passion on a trip to the museum. He is famously quoted as being utterly fascinated by the shoes and that he has never seen something like that. He is also said to have been inspired by a book of Roger Vivier’s designs, who designed shoes for Christian Dior in the 1950s. Louboutin set up his shop in Paris in 1990s and he happened to not be dissatisfied with the shoes manufactured. His assistant happened to sit there and paint her nails, which the designer took and painted the sole of the shoe. What started years ago as the nail polish accident (which I’d prefer to call innovation and not accident) and a vision to curate women’s heels to make them feel confident, Louboutin heels are nothing short of an icon in the fashion world.
Louboutin has been famously quoted that red outsoles are supremely flirtatious and his customers never let him stop.
Tiffany is probably the most iconic jewellery brand and it all started when Charles Lewis Tiffany and his friend John B Young decided to open a fancy good store in New York City was the $1000 given by Charles’ father. Tiffany boasts of classic American jewellery and it caters to fashionable ladies who came to Broadway searching for fashionable and contemporary pieces of jewellery, in contrast to extravagant pieces typical of the Victorian era. Tiffany even went ahead to win the grand prize for silver craftsmanship at the 1867 World Fair in Paris. Ever since then, Tiffany has firmly etched itself in not just fashion but history books. The 1961 cult movie Breakfast at Tiffany’s catapulted the brand to pop culture. Not only Tiffany’s iconic jewels but Tiffany’s iconic robin’s egg shell blue boxes have achieved iconic box over the years. Tiffany’s blue itself, best described as robin’s egg-shell’s blue, has been used on Tiffany’s boxes for more than a century. Tiffany’s timeless pieces cannot be imagined in a box in a colour other than Tiffany’s blue and it will be rather apt to conclude that the colour has got itself attached to the brand. Tiffany has been one of the forerunners in the field of colour trademark with the colour robin’s egg-shell’s blue being used for boxes and packets since 1845. Having been used this extensively, the colour is now better known as Tiffany blue.
Another colour which has attained iconic status is the Barbie pink. So intrinsically attached it is with the brand that Barbie pink is the best way to describe the Pantone 219C. The pink Barbie packets have it expressly mentioned- “Mattel owns the colour Barbie pink” and it has been a forever struggle on the part of Mattel to wipe out other similarly fashioned fashion dolls in hot pink-meets-fuschia packets.
Christian Louboutin’s red lacquered outsole has assumed iconic status over the years. It’s distinctive and it reflects the vision of the designer who has conceptualized this design for 27 years. From a generalised point of view, it would be nothing short of injustice if Christian Louboutin’s red lacquered outsole is not granted protection and if the market is flooded with red outsole-d shoes from other brands. Louboutin himself has been quoted saying – “For 26 years, the red sole has enabled public to attribute the origin of the shoe to its creator, Christian Louboutin.” The red outsole was granted federal registration in2008. Barely 3 years later, in April 2011, Christian Louboutin filed a suit against Parisian fashion giant Yves Saint Laurent for trademark infringement rooting from YSL’s use of red outsoles on its shoes as part of the monochrome shoes available in different shades including Yves Saint Laurent’s Tribute, Tribtoo, Palais and Woodstock. Right as Yves Saint Laurent released this line of shoes, Christian Louboutin filed a trademark infringement suit against Yves Saint Laurent in April 2011 in the United States District Court for the Southern District of New York. As per Christian Louboutin, YSL was liable under the Lanham Act for claims inclusive of trademark infringement and counterfeiting, false designation of origin, unfair competition and trademark dilution. A preliminary injunction preventing Yves Saint Laurent from marketing its monochrome red shoe, was also sought. In response to the same, Yves Saint Laurent filed a counterclaim seeking cancellation of Christian Louboutin’s red sole trademark on grounds of lack of distinctiveness and that it was too functional to obtain trademark protection.
CHRISTIAN LOUBOUTIN V YVES SAINT LAURENT: THE CASE TIMELINE
At the District Court, Christian Louboutin’s motion for preliminary injunction was denied by District Judge Victor Marrero, on grounds of Louboutin failing to establish the merits of the case because of single colour marks are functional and hence, ineligible for a registered trademark. Christian Louboutin filed to appeal the district court’s decision. The Second Circuit Court of Appeals, however maintained that the fashion industry was exempted from the Supreme Court’s stand on the protectability of a single colour. Based on these, trademark protection was expressly denied to Christian Louboutin’s Trademark for “contrasting” red sole. The Second Circuit was primarily focused on the defence of functionality taken by Yves Saint Laurent. Citing the classic case of Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Second Circuit mentioned that the Supreme Court expressly forbade the per se rule against protection of a single colour as a trademark in a specific industry. The Second Circuit gave due attention to the fact that the Louboutin Red Sole has attained secondary meaning in the consumer psyche. Louboutin’s media coverage, consumer surveys were strictly scrutinised to analyse the same. Even though it is beyond doubt that Louboutin has a very strong effect on the consumer psyche and the red sole is inherently attached to the Louboutin label, the appeals court held that- “Louboutin’s failure to show that the secondary meaning of its Red Sole Mark extended to uses in which the sole did not contrast with the upper part of a shoe (i.e., on monochromatic red shoes). For example, of the hundreds of pictures of Louboutin shoes submitted to the district court, only four were monochrome red. YSL, on the other hand, had produced evidence of its sale of monochromatic red shoes, as well as other monochromatic coloured shoes since the 1970’s.” The Second Circuit further went on to add that Louboutin’s Red Sole’s Trademark is valid only when it contrasts in colour with the upper part of the shoe and ordered the U.S Patent and Trademark Office to do the same.
The war between these two fashion giants remain one of those landmark cases which establish the importance of secondary meaning and how because of the same, even a single colour can function as a trademark in the fashion industry. Though it can be argued that Christian Louboutin’s contrasting red is its distinguishing mark, but there are shoes from the house of Christian Louboutin whose colour exactly do not adhere to the concept of “contrast”.
The never ending saga between these two fashion giants got little more interesting when luxury jewellery giant Tiffany & Co. filed an amicus curiae brief in support of Christian Louboutin and in the words of Harley Lewin, the lawyer for Tiffany & Co.- “We are enormously pleased that Tiffany has weighed in,”. He went on to add that Tiffany has agreed with Louboutin’s arguments and has put forward arguments thus strengthening the case. Tiffany even contended that the court appeared to have relied on generalities about the fashion industry and analysing whether the use of single colour can be considered “functional” on fashion items.
While exclusivity and brand identification remains the basic arguments in favour of trademarking colours, sceptics and a section of legal professionals alike have arguments.
The most (in)famous rule against trademarking a single colour remain the colour depletion theory. The colour depletion theory is based on the concept that the number of colours in the universal colour palette is limited and reserving one colour for one brand will only deplete the available palette of colours. This theory was first articulated in the now famous Campbell Soup Co. v. Armour & Co., 81 F. Supp. 114 (E.D. Pa. 1948) in which the plaintiff Campbell & Carnation was denied the use of their signature red and white stripes on grounds of colour depletion. However, the Owens-Corning court acknowledged in a ruling pertaining to the use of single colours as trademarks that the per se prohibition of the colour depletion theory conflicts with the liberating nature of the Lanham Act of the US. This is a direct revoke on the part of the colour depletion argument. The colour depletion theory, according to modern jurists, is erroneous because of the very fact that it presumes that the visible spectrum is finite and limited. Trademark owners and transnational market participants were sceptical about the usage of reserving one colour for a particular product, and wanted widely used colours to remain in the public realm. Colour depletion, as a concept, is arguably not a huge issue for local markets, it can cause a huge uproar and a plethora of litigations in the transnational market, because of the huge number of competitors and their rat race for colour branding.
Talking about the concept of colour depletion with respect to the Louboutin case, the red which was asked to be trademarked was found unsuitable for protection. The Supreme Court, had previously held, in the Qualitex case that the colour depletion theory is reliant on a sporadic problem for a finding a perpetual solution. The Qualitex case was a result of 1980s liberalization of markets when world trade and foreign direct investment was the order of the day. So litigious was the atmosphere with respect to trademarks that in the mid 90s, it was estimated that intangible assets like trademarks amounted for almost half the net worth of the company.
The Qualitex decision was reached in 1994 after a decade of discord among federal circuit courts. The Supreme Court finally granted certiorari to resolve the matter and arrive at a decision for the green-gold trademarks for press pads in use in the dry cleaning industry.
In Louboutin’s case as well, the Court opined that Louboutin’s red, if protected, will be detrimental to other designers and that Louboutin only will have the right to paint a full palette. This, in time, will limit, the creative freedom of other designers.
Again, analysing this concept, we find that Louboutin exactly did not claim the colour “red”. It claimed protection on the red lacquer outsole. The red they claim is limited to the outsole of their iconic shoe and it’s not commonplace to find red outsoles on every other shoe. The secondary meaning which has come to be attached with the red outsole was also not acknowledged. Also, it has been extensively argued that the colour depletion theory has very little scientific basis. There are not a handful but millions of different colours distinguishable to the human eye. Again, if a manufacturer is restricting itself to just one shade of a spectrum, it is the opposite of colour depletion.
SHADE CONFUSION THEORY
Theories of Shade Confusion have also backed the idea of not registering of non-conventional trademark, namely, the colour trademark. Shade confusion theory, however, in the opinion of a number of scholars, is nothing specific to a colour trademark. The magnitude of confusion with respect to shades of colour is the same as that of a word. Hence, this should not ideally act as a deterrent to the registration of colour trademarks. The Court, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the defendant’s shade confusion argument was rejected by the Court on the same grounds. The logic of shade confusion is flawed on various grounds, one of them being the fact that if shade confusion is considered one of the real problems why colours should not be trademarked, then colours shouldn’t be used in trademarks at all. Shade confusion theory is derived from the concept that colours and different shades of colours can easily lead to confusion, which in modern mercantile scenario, is considered vague. A couple of centuries ago though, call it lack consumer awareness or otherwise, it would have been an issue but consumer awareness has increased in geometric progression over the years. However, the basic argument which was applied in yesteryears was that close shades of pantone would create confusion both for trademarking purposes and in the minds of consumers. Therefore, they would fail to survive the basic purpose of the trademarks, which is imparting and enforcing uniqueness of products. The Courts have also strongly criticised this theory and went to the extent of saying that the courts, if required, will create the same lighting conditions under which the product is sold.
THE FUNCTIONALITY TEST
Next comes the Functionality clause. The functionality argument is based on the concept that the natural colour of a product cannot be legally protected because that would be unfair to other competitors in the same market. Though unrelated to fashion, a popular example is the John Deere tractor. Unlike myths, John Deere does not own green. Green happens to be a functional colour. Non-functionality is another requirement for the successful protection of any trademark colour. The concept of functionality has extended from utilitarian to aesthetic. As per the Lanham Act, trademark registration is prohibited for any mark that comprises of any matter that is functional as a whole. For a trademark to be valid, it needs to be both non-functional as well as source identifying. A feature is considered functional if it’s mandatory for the use of the article or if the cost or quality of the item is affected by the same. As worded by the Supreme Court, the functionality test depends on whether the exclusive feature of the item would substantially disadvantage the competitors. Justifying the functionality of colour poses to be another challenge when deciding whether a certain colour is eligible for a trademark. With respect to Louboutin, aesthetic functionality was a hugely debated topic at the courts. The doctrines of functionality and aesthetic functionality have both been discussed in the 1982 case of Inwood laboratories. As already hinted, the doctrine of functionality debars certain product features from being protected if they are essential to the use or purpose of the commodity or if they affect the cost or quality of the article. In case of Louboutin, it can be argued that the red sole does add to the value of the article. However, the doctrine does not apply to the pink packaging of the famed fashion doll from Mattel- Barbie.
Functionality can be utilitarian, aesthetic or communicative. According to the concept of utilitarian functionality, the features which tend to serve a utilitarian purpose are not granted trademark protection. Utilitarian functionality was well defined by the Supreme Court in the 2001 case TrafFix Devices, Inc v Marketing Displays, Inc. which revolved around if dual-spring mechanism to permit signs to withstand strong winds was functional and hence not eligible for trademark. Another popular example being John Deere and their ownership on the colour green. True, the yellow deer with the green background is trademarked but John Deere does not own green due to basic principles of functionality. Aesthetic functionality debars those aesthetic feature from being trademarked which has an important role to play in the commercial success of a product. Communicative functionality is quite similar, though. It indicates the use of a product feature which is used to communicate non-source related meanings.
ANALYSIS OF THE ENFORCEABILITY OF SINGLE COLOUR TRADEMARK: THE LOUBOUTIN PERSPECTIVE
Coming back to Louboutin, the red outsole took its birth in a bit of a controversy. Louboutin’s vision was to create a pair of shoes that will make women feel confident and empowered. Like his muse, the shoes needed to ooze class, confidence and eminence. It all happened on a quaint afternoon when a shoe inspired by Andy Warhol’s ‘Flowers’ arrived and Louboutin found it to be dull and unappealing. As already mentioned, an assistant was painting her nails in a shade of red, when Louboutin probably had a brilliant brainstorm and he grabbed the nail paint and painted the sole of the shoe, red. With what is now known as the nail polish accident, the iconic shoe was born. Christian Louboutin, the now shoe mogul, sells more than five hundred thousand pairs a year and Louboutin shoes are considered a symbol of class. This is just a brief part of the history which gave birth to the iconic red shoes. Adding to this, the vision and the inspiration behind Louboutin remains and not considering these while deciding whether to trademark the red colour or not, does not do enough justice to the designer. 
The secondary meaning comes to play here. That red on the outsole was a result of years of hard work and inspiration and careful culmination of artistic sensibilities. Grouping this with just another “red” does not do justice to Louboutin’s ideologies. Of late, Christian Louboutin has even launched other products including cosmetics in the same shade of red. Additionally, this idea has been around for so many years that any other footwear from any other brand with the same attributes would necessarily create identity confusion in the mind of consumers. Christian Louboutin has seeped into popular culture, with pop diva Jennifer Lopez sings in her song “Louboutins” – “I would like a shiny new pair of Louboutin shoes. You know, the ones with the high heels and red bottoms.” Red outsoles in Louboutin shoes possess that value in the minds of consumers. A red bottomed shoe equates with Louboutin.
Coming back to the case and the court-room drama that hence ensued, the judge denied the request for injunction and mentioned that colour in the fashion industry has certain aesthetic functions pivotal to competition, hence making it unlikely for Louboutin that the brand is entitled for copyright protection. True, the Louis Vuitton logo or the Burberry check has been duly trademarked. Louboutin went on to mention that it has been the first to commercially use a red lacquered outsole to which the opponent retorted that red outsoled shoes have previously bene seen on King Louis XIV and more recently on celluloid when Dorothy swayed in ruby slippers in “The Wizard of Oz”.
The judge drew an analogy between fashion and art and spoke of a hypothetical case between legendary painters Picasso and Monet. Picasso’s Blue phase in which he painted in shades of blue with occasional bursts of other colours is legendary. Monet’s “Water lilies” are equally famous. According to the Judge, it would be erroneous to grant Picasso monopoly over the colour blue. The Judge also took up the fictitious case in which Picasso decided to sue Monet for the use of the same shade of blue in “Water Liles” as he has extensively used in his Blue Period. Whether fashion can be equated with art or not is again a concept with varied opinions. Fashion, in my opinion, is necessarily, an intertwined but different concept. With movements like #wearyourart and fashion being considered an extension of the art form, the Judge’s analogy cannot be brushed off.
With all the legal developments around the issue of colour trademark, it is yet difficult to arrive at a definitive conclusion on the same. Any trademark needs to be fundamentally distinctive, that is a pre requisite and in many a cases including the iconic Louboutin shoes, most brands adhere to the requirement, be it Tiffany’s blue or Cadbury’s purple. After the landmark case of Qualitex , it can be safely concluded that a certain colour may serve as a product, provided the colour is not de jure functional. Certain concepts still remain unclear though and with Louboutin’s legacy, what exactly were the obstacles in successfully registering a trademark. The requirements for registration of trademarks, conventional or not are still undergoing further developments, around the world. For instance, India does not expressly provide for single colour trademarks, but it is hinted at by the guidelines from the Trade Mark Office that single colour trademarks would soon be enforced. Spain does not traditionally allow the registration of single colour trademarks and there are instances of such rejection before. The Israeli Trademark Law, however, expressly acknowledges single colour registration. Malaysia, however, does not expressly provide single colour trademark registration but it does say that colour is one of the important factors to be taken into account while considering the registration of a trademark. New Zealand’s Trade Mark Act 2002 mentions colour as one of the “signs” which is included in the definition of a registrable trademark. Canada’s laws does not allow registration of colour per se, except if it is part of a shape or design.
In light of these, this can at least be safely concluded that trademark for colours has a long way to go. Here’s hoping that fashion royalty gets its share of trademark.
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