IPcopy welcomes guest contributor Annette Freeman:

Colour me red…or blue.

I see trees of green, red roses too

I see them bloom, for me and for you

And I think to myself – what a wonderful world.

So sang Louis Armstrong, going on to croon about “Skies of blue, clouds of white” and ‘“the colours of the rainbow, so pretty in the sky”. But when it comes to trade marks, colours may not be there “for me and you”. A high-profile trade mark legal battle recently illustrated the difficulties of protecting and enforcing colour as a trade mark.

You may assume that if a trade mark registration for a colour is achieved, this will ensure that the colour off limits for use by rivals – but just how broad is such exclusivity?

Lately French shoe designer Christian Louboutin has been fighting legal battles on several fronts to protect the exclusivity of the colour red on the soles of his high-end shoes, which can sell for up to £750 a pair. Louboutin has been colouring the soles of his shoes red since 1972. Worn by the fashion and celebrity in-crowd, Louboutin has been able to successfully claim in the USA that the colour red on the soles of shoes has come to indicate Louboutin shoes only, and other shoe makers cannot use the colour red on the soles of their shoes.

However, the competitor that Louboutin sued for trade mark infringement, Yves Saint Laurent, was, in fact, not found guilty of trade mark infringement — YSL had been making shoes with red soles, that’s true, but they had done so only on monochromatic all-over red shoes. The court ruled that the distinctive character of the Louboutin trademark is that only the sole is red. YSL can go on selling all-over red shoes – which it has also been doing since the 1970s. So Louboutin’s colour trademark is valid – but not infringed in this case.

But spare a thought for the fashion conscious girl without big bucks to spend on Louboutin red soles. A newspaper reported recently that sales of £1.49 tester paint pots in the shocking red colours – ‘Flame’ and ‘Showstopper’ – had leapt by 40 per cent over the summer. Young women were seen to be furtively comparing the colours to pictures of Louboutin soles in fashion magazines. Could Louboutin sue such fashion wannabees? Theoretically, on the showing of the US case, yes. Luckily for the impecunious girls, he’s unlikely to bother. Few are going to be fooled by the DIY red soles once they get up close.

In France, a court ruled in favour of Spanish fashion chain Zara, also sued by Louboutin for selling a particular style of red-soled shoe that retailed for about £40. The court expressed the view that Zara’s shoe was unlikely to be confused with the high-end Louboutins. A back-handed compliment, perhaps, but a ruling that allowed Zara to keep selling.

Mr Louboutin himself is quoted as saying, rather plaintively, that he understands that he cannot monopolise a single colour absolutely:

I understand that, but it is a red in a specific context, there is Ferrari red [and] Hermès orange…Even in the food industry, Cadbury recently won a lawsuit against Nestlé for using purple packaging. All this proves that the colours play a part in a brand’s identity. I’m not saying that red usually belongs to me – I repeat that this is about a precise red, used in a precise location.

His comments are legally accurate, and reflect the limitations of the registration of colour trademarks, and the consequent limitations on the ability to enforce them against competitors. Such registrations are indeed limited to particular shades of the colour – in some registries, the specific Pantone® number may be indicated. The manner of use of the colour – whether it is on the sole of a shoe, or all over a delivery van, or used on packaging – may also form part of the monopoly granted. And in order to be granted this exclusivity, the trade mark claimant must prove that the colour has come to indicate their goods or services to the exclusion of others. It’s a high bar, and the resulting rights may be quite limited in their enforceability against others, as Mr Louboutin has found.

That doesn’t stop trade mark owners from seeking registration for “their” colours. Here’s a fun article with great pictures of some well-known colour trademarks, from Tiffany’s duck-egg blue packaging, to UPS’s ubiquitous brown vans.

But just to highlight how difficult it can be to achieve a colour registration to begin with, let alone enforce it, consider that Cadbury’s has only recently been able to secure a registration in the UK for the colour purple (Pantone 2685c) for its chocolate packaging, after eight years. The application was first filed in 2004. Apart from having to prove its distinctiveness – the colour has been used, after all, for about 100 years – Cadbury’s faced a challenge from rival Nestlé. Now Cadbury’s has the registration, but the battle has only just begun, as the company will be well aware after a five-year long legal tussle over the colour purple in the Australian courts. There the company was eventually unsuccessful in trying to prevent a local rival, Darrel Lea, from using a similar purple on chocolate packaging. Ultimately, the court was not convinced that consumers would be confused between the two brands.

Monopolising a colour is not for the faint hearted. As Julie London sadly sang:

These are the eyes that watched him

As he walked away

Colour them grey.

This is the heart that thought

He would always be true

Colour it blue.

Annette Freeman

October 2012

http://www.freeman-ip.com