IP News

Claiming the Color Red Part II

On 05 September 2012, the United States Court of Appeals Second Circuit (Jose A. Cabranes, Circuit Judge) issued a decision1 in the Christian Louboutin (“Louboutin”) vs. Yves Saint Laurent (“YSL”) case raised to it on appeal from the 10 August 2011 order of the United States District Court for the Southern District of New York. The District Court denied a motion for a preliminary injunction against alleged trademark infringement by YSL of Louboutin’s “Red Sole” mark. The motion sought to stop YSL from selling and marketing shoes that bears the same or a confusingly similar shade of red that is Louboutin’s Red Sole Mark.

The Second Circuit succinctly ruled that the District Court’s decision that a “single color can never serve as a trademark in the fashion industry is inconsistent with the U.S. Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995) 2” and that Louboutin’s red sole mark is a valid trademark. However, the Second Circuit court ruled that YSL did not commit any infringement with its all red shoe.

It explained that Louboutin’s trademark, which is the red lacquered outsole found in its high-fashion shoes, “has acquired limited secondary meaning3 as a distinctive symbol that identifies the Louboutin brand.” It ruled that Louboutin held a valid trademark over the red outsole because of such distinctiveness.

It said: “we see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself.’”

However, the Second Circuit limited the use of the Louboutin Red Sole trademark to a red outsole which is different from the color of the rest of the shoe. It opined that in such a scenario, where there is a contrast of colors, the red sole is protected by trademark because then it becomes distinct. The Second Circuit was careful in clarifying that the secondary meaning of the red lacquered outsole exists when accompanied by the remainder of the shoe in a contrasting color. “It is the contrast between the sole and the upper that causes the sole to ‘pop,’ and to distinguish its creator.” It directed the U.S. Patent and Trademark Office to modify and limit Louboutin’s Red Sole trademark to such situations.

The Second Circuit clarified that the use of a red outsole in all situations cannot be protected by trademark and declined to protect Louboutin’s Red Sole Mark where it forms part of a monochromatic design – one similar to the shoe designed by YSL. Hence, according to the Second Circuit, the red sole in YSL’s all red shoe “is not a use of Louboutin’s modified trademark.” However, it did not delve on the issues of consumer confusion and functionality.

It reversed the District Court’s order denying protection to Louboutin’s modified trademark consisting of contrasting red lacquered soles. It ruled that Louboutin’s motion to prevent YSL from using a red sole as part of a monochromatic or completely red shoe, could not be given due course and it partly affirmed the District Court’s order on that matter and remanded back to the District Court for further proceedings with regard to YSL’s counterclaims.

Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc. (No. 11-3303-cv (2d Cir. Sept. 5, 2012).
According to the Qualitex case, “sometimes[ ] a color will meet ordinary legal trademark requirements[, a]nd, when it does so, no special legal rule prevents color alone from serving as a trademark.”
The Second Circuit stated that secondary meaning is “acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”


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