IP Views

Claiming the Color Red

September 26, 2011
by: Patrice Barron

New York District Judge Victor Marrero in his decision dated 10 August 2011 dismissed plaintiff Christian Louboutin’s (“Louboutin”) motion for a preliminary injunction against respondent Yves Saint Laurent (“YSL”) in the case of Christian Louboutin S.A. vs. Yves Saint Laurent America Inc. The motion sought to prevent respondent YSL from selling and marketing shoes that bears the same or a confusingly similar shade of red that is protected by Louboutin’s Red Sole Mark.

Louboutin is known for making high fashion footwear since 1991, and began using red-lacquered soles in 1992. His shoes graced the runways of Paris, Milan, and New York, and contributed for the couture and ready to wear collections of well-known designers like Jean Paul Gautier, Chloe, Dianne Von Fursterberg, Givenchy and Lanvin, to name a few. Judge Marrero even quoted a Jennifer Lopez song in his decision, attesting to the popularity of Louboutin’s shoes among the stylish and the fashion forward.

“Boy, watch me walk it out. . . Walk this right up out the house I'm throwin' on my Louboutins . . . (Jennifer Lopez, Louboutins. Epic Records 2009)

On 1 January 2008, USPTO granted Louboutin Trademark Registration No. 3,36,597 for the “Red Sole” Mark. The certificate of registration includes both a verbal description of the mark and a line drawing intended to show placement of the mark.

In January 2011, Louboutin claimed that YSL used the same or confusingly similar shade of red as that protected by Louboutin’s Red Sole Mark in YSL’s 2011 Cruise Collection, particularly the Tribute, Tribtoo, Palais and Woodstock models. All of these models, Louboutin claimed, bear a bright red outsole as part of a monochromatic design. YSL refused to withdraw the challenged models from the market. Hence, Louboutin sued YSL.

The simple issue boils down to whether or not color, in this case, Louboutin’s Red Sole mark, may be protectable as a trademark.

The Lanham Act upholds the use of color in a trademark, but only in distinct patterns or combinations of shades that manifest a conscious effort to design a uniquely identifiable mark embedded in the goods like, for example, the LV monogram combined in a pattern of rows with 33 bright colors or the Burberry check pattern. But here, Louboutin’s registration is confined to a single specific shade, particularly the color red alone when used on the soles of “high fashion” footwear.

In arriving at its decision, the Court questioned whether the use of red outsoles serves non-trademark functions other than as a source identifier, and if it will affect the cost and quality of the shoe. The Court examined if granting trademark rights for Louboutin's use of the color red as a brand would "significantly hinder competition.”The Court determined if it will it allow and "permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient."

In ruling against Louboutin’s preliminary injunction, Judge Marrero proposed a fanciful hypothetical situation where Picasso would challenge Monet, and the former would seek an injunction to bar the display or sale of works because the latter’s Water Lilies painting used a distinctive shade of indigo that Picasso claims was the same or too close to the shades of blue that he used to hallmark his Blue Period.

The Court opined that Louboutin's claim to the color red is, without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. This will simply allow Louboutin to monopolize a particular color. An absurd scenario could also arise where other designers could be threatened by constant litigation if they wish to express some of their ideas using a crimson hue or worse, start their own race to trademark their own signature color.

In the Philippines, as provided under Section 123.1 (l) of the Intellectual Property Code, color alone may not be registered as a trademark unless defined by a given form. It is fundamental in trademark jurisprudence that color alone, unless displayed in a distinct or arbitrary design, does not function as a trademark. In Victorias Milling vs. Ong Su (G.R. No. L-21183, 27 September 1968) the Supreme Court held that color alone, unless displayed in a distinct or arbitrary design, does not function as a trademark. To register a color as material feature of a mark or trade name, it must be illustrated in drawings following the color chart of craftsmen.

Sources:

Ignacio Sapalo. Background Reading Material on the Intellectual Property System of the Philippines.

World International Property Organization. 1994.
www.christianlouboutin.com
http://runway.blogs.nytimes.com/2011/08/10/red-faces-at-louboutin/

Office Address

2nd Floor SEDCCO Building
Rada cor Legaspi Streets
Makati City, Metro Manila
1229 Philippines

Contact

Ph: (632) 813.0120
(632) 892.3228
(632) 892.3252
Fax: (632) 894.2073
E-mail: bnu@iplaw.ph
URL: www.iplaw.ph