If you see a high heeled shoe with a red sole, would it bring to mind any particular brand? The well-heeled observer might see this as a no brainer, and as a mark of Christian Louboutin. However, a US Court has recently cast doubt on the ability of the red sole to act as a trade mark.
One of the key aspects of success in the fashion industry is having a distinctive product offering that stands out in a very crowded marketplace. A number of factors can assist in elevating the positioning of a product, including having a strong, identifiable brand, or trade mark. Brands allow consumers to easily identify the source of a product, enabling customer loyalty, development and maintenance of goodwill.
There are a variety of types of brands that are capable of trade mark registration - the name of a label, a logo, or even a pattern or a colour. The underlying requirement is that the brand must act as a sign that distinguishes the goods and services of one trader from those of another.
The importance of choosing a brand which is not only marketable but which is protectable and valid has come to light in the US in Christian Louboutin SA v Yves Saint Laurent America, Inc. While this is a US decision, the principles are still applicable in an Australian context. The luxury shoemaker Christian Louboutin is world-renowned for its high heeled shoes cradled by a red lacquered sole. These red soles are the subject of a US trade mark registration.
The conflict between Christian Louboutin and Yves Saint Laurent (YSL) began after YSL started selling shoes that were entirely red in colour, complete with a red sole. Christian Louboutin sued YSL for trade mark infringement and sought an injunction to stop YSL selling its red shoes. YSL counterclaimed for cancellation of Christian Louboutin’s US trade mark registration on the grounds that it was non-distinctive, ornamental and functional.
Prior to these proceedings, Christian Louboutin had actively enforced its trade mark registration against its competitors, but no entity had ever before challenged the validity of Christian Louboutin’s rights. In Australia, provided the mark is functioning as a “badge of origin”, this should be sufficient to protect the mark’s validity.
The US court found that, while Christian Louboutin’s trade mark had undeniably acquired distinctiveness and enabled consumers to identify Christian Louboutin as the source of the shoes, the red sole may also have been performing in an aesthetic, functional manner. It was this point that has now cast doubts on the validity of Christian Louboutin’s US trade mark registration.
The court also took the view that other traders should not be prevented from using an aesthetic product feature such as a red sole by virtue of Christian Louboutin’s US trade mark registration and resulting monopoly over the colour red. Statements by Christian Louboutin that the red colour was chosen by it because it was “engaging”, “flirtatious”, “memorable” and “sexy” were construed by the court as meaning that the red colour on the soles served a functional, aesthetic purpose - as opposed to functioning as a trade mark.
Ultimately, the court not only refused to issue an injunction, but also stated its intention to cancel Christian Louboutin’s US trade mark registration. In view of the doubts as to the validity of Christian Louboutin’s US trade mark registration, the court ordered that the parties reconvene at a later date at which Christian Louboutin would be required to argue why its US trade mark registration should not be cancelled.
Given what is at stake, not surprisingly Christian Louboutin has appealed the findings of the court, so this is by no means the last word on the issue of validity of colour marks in the US. As an interesting aside, Tiffany & Co (Tiffany) has filed a brief with the court in support of a finding in favour of Christian Louboutin. While Tiffany is not a party to the proceedings, it is the owner of a US trade mark registration for the well-known blue colour used on its packaging and signage (the sight of which can make one weak at the knees), giving it a vested interest in the outcome of these proceedings. If Christian Louboutin’s US trade mark registration is cancelled, legal precedent will then be established giving Tiffany’s competitors strong grounds to challenge Tiffany’s US trade mark registration.
Whichever way this dispute is finally resolved, the proceedings bring into focus the importance of choosing a brand that can be protected and maintained as a valid trade mark registration without risk of revocation. It also highlights the lengths that the big fashion houses are prepared to go to to protect the investment in their point of distinction.
Lisa Egan is a partner at Middletons law firm. Shehana Wijesena is a Middletons senior associate.
