Are Louboutin’s red bottoms trademarked?
The high-fashion shoes designed by Christian Louboutin have had red lacquered soles since 1992. Apparently, the inspiration struck when he dabbed red nail polish on the bottom of a pair of black shoes; in 2008, Louboutin sought trademark registration for the red sole motif.
Louis Vuitton sued high fashion rival Yves Saint Laurent (YSL) in 2011 to prevent the sale of Yves’s monochromatic red shoe, which likewise features a red sole. Because of the court’s conclusion that a trademark based only on color cannot be valid, the New York District Court declined to enjoin Yves Saint Laurent.
The Second Circuit Court of Appeals disagreed, ruling that customers gave “secondary meaning” to the color red when it appeared on the bottom of shoes with contrasting top colors. The court did not award the injunction against Yves Saint Laurent, despite the fact that the case was deemed a victory for Louboutin. This was due to the fact that the use of the red sole by YSL, which included a red upper shoe rather than a distinct color, did not constitute a use of the Red Sole Mark.
When a color takes on a secondary meaning
Colors may have a secondary meaning when they serve as logos. Courts in the United States have held that a product characteristic has secondary meaning when in the minds of the public, the major importance of a product feature is to identify the source of the product rather than the product itself. According to the market research that Louboutin presented to the court, people had started to associate the red sole with the Louboutin brand.
The findings of the market research were not coincidental; since the introduction of the red-soled shoes to the market, Louboutin has spent millions on advertising them. Without a doubt, the decision of the court is just. When a business puts a lot of effort into creating a name for itself that people remember, it’s only right that they have the rights to use such names exclusively.
If a mark does not already have distinctive characteristics (such as the Nike swoosh), but it gains additional significance in the eyes of buyers, the law considers it to have acquired distinctiveness.
When a London court supported Cadbury’s use of purple for their milk chocolate wrapper, it was a ruling that color could also be protected as a trademark. According to the court, the purple milk chocolate box has been associated with the Cadbury brand since its introduction in 1914.
Here, color isn’t enough to warrant trademark protection on its own, but colors that customers come to identify with a business due to frequent use over time might be. The law will not support a mark that prevents rivals from using a product’s essential features or, to use design terminology, a variety of alternative designs.
For the most part, color is safe under the functioning defense. If a flowery pattern on a dish set does not qualify for trademark protection, then why does the red sole of a shoe?
Why? Because red shoe bottoms do not serve an aesthetic purpose, in accordance with the Second Circuit’s rationale, but floral designs do.
Courts in the United States will not uphold a trademark if it causes substantial non-reputation-related disadvantage for rivals. A color trademark will not be eligible for trademark protection if it would seriously restrict competition by limiting the range of alternative designs, according to the “aesthetic functionality” test.
To find out if a design is functional, the court looks at the mark’s source-identifying elements and how much it would cost to prevent rivals from utilizing the feature, as calculated by the court. In the Louboutin case, the court didn’t go into this analysis because it was based on the basic “distinctive feature” test. Based on the market research that both sides of the lawsuit presented, the Red Sole Mark would probably lean more toward a source-identifying component than competitive costs to rivals.
The purple milk chocolate box from Cadbury is no different. Regardless of whether there is a competitive cost from other firms packaging their milk chocolate in purple containers or not, the source-identifying feature of the packaging is significantly more important.
The use of color by Cadbury and Louboutin is similar to logos. This case law does not pose a threat of a color-based monopoly on shoe production, chocolate production, or any other commodity. On the contrary, they believe that you are entitled to exclusive use of the mark if your distinctive use of color—which is not inherently functional—has become recognized by buyers as a brand.
For a long time now, the courts have recognized that counterfeit goods with replicated trademarks violate the exclusive ownership right of the original owner to profit from their branding. Color alone can be trademarkable with enough ingenuity, as we have seen with skilled designers.
The design house’s trademark application for red-soled high heels was recently rejected by Japan, demonstrating how challenging it may be to trademark a hue in some nations. At this time, the validity of trademarking colors is a topic on which there is no universal agreement.
What does a trademark do?
A trademark protects the distinctive features of a product or service that make it stand out from other companies and make it easy for buyers to recognize where their purchases originated. The US has permitted trademarking of colors since 1995. To further safeguard their brands, companies such as Home Depot, Tiffany & Co., UPS, T-Mobile, Target, and Tiffany & Co. have trademarked individual hues. A lot of companies have jumped on this bandwagon, but it’s not easy to copyright a color scheme.
Legally, a trademark for a color or color scheme must be able to identify its source, rather than being only aesthetic or functional. This is true in many nations, including the US. There is an additional burden on color trademarks to demonstrate a secondary significance of the color or color scheme. This sets a high standard for brands to achieve, and they frequently do so.
The general idea behind establishing secondary meaning is that a mark or color may not be intrinsically distinctive, but that the mark has become practically associated with the applicant due to their usage of it. Proof of substantial promotion utilizing the color by the application and/or “consumer surveys demonstrating that a significant number of relevant consumers link that specific hue or combination with the applicant are common ways to establish secondary meaning.
One crucial thing to keep in mind while applying for a color trademark, as with any trademark, is that the color in question cannot have some practical use. Because protection may be rejected if the color communicates a feature of the item or service, such as its size, strength or capacity, this might be a problem when trying to get a color trademark. Even though this seems like a simple problem to solve, case studies show that it is not.
The following examples of color marks that were not granted trademark protection: “purple sandpaper,” “amber-colored mouth wash,” and “pink ceramic hip implants.” The reasoning behind this decision was that the color was a signal for grit size, the color indicated the flavor, the color was a harmless by-product of the devices’ components. These cases illustrate how a seemingly insignificant association between color and product function can lead to trademark denial.
China is one of the nations that is quite hardline when it comes to color trademarks; in fact, they will reject any trademark application that pertains to a single hue. According to China’s National IP Administration, a single-color trademark gives the owner too much authority, which might cause market disruption. Next, there are Japan and Korea, two nations that fall in the middle ground between China and the US. Although Japan has not yet granted such a trademark, both Korea and Japan permit trademarks with a single color.
Color trademarks are notoriously difficult to secure, however many firms do try. Among these labels is Louboutin, whose signature red-soled shoes have made the label famous. Fifty nations, including the US, UK, AU, France, Canada, India, Russia, and Singapore, have registered trademarks on the brand’s signature red soles. Japan turned down Louboutin’s trademark request for the distinctive soles, despite the fact that the designer has secured substantial protection for this aspect of its brand.
When Louboutin first applied to register their red-soled shoes as a trademark in 2015, the Japan Patent Office (“JPO”) turned them down. After this denial, Louboutin took legal action by submitting an appeal to the JPO’s Appeal Board. The answer to the appeal came out in June 2022, and the JPO rejected Louboutin’s mark again.
When assessing whether or not to register a single color mark, the JPO takes two key aspects into account: first, the color’s acquired uniqueness via considerable usage as a source identifier; and second, the balancing act between unfair restraint to rivals and advantages to brand owner if given protection to the single color mark. During the Louboutin appeal, the JPO leaned largely on the second reason.
The shoe designer Christian Louboutin’s lawsuit against the Japanese company Eizo is probably the impetus for the Appeal Board’s decision. In 2018, Louboutin filed a lawsuit against Eizo for selling women’s shoes featuring red rubber soles. Louboutin said that Eizo violated his intellectual property rights under Japan’s Unfair Competition Prevention Law by selling shoes with misleading sole colors that deceived buyers about the shoes’ origin.
The court found in favor of Eizo, pointing out that red-soled women’s heels were popular in Japan before Eizo introduced theirs. Since Louboutin’s high costs would force buyers to be more vigilant and observe the distinctions between Louboutin’s shoes and Eizo’s shoes, the court also found that there was no probability of misunderstanding between the two brands’ shoes.
In its opposition to Louboutin’s trademark, the JPO most certainly drew on the Eizo case. The JPO was mostly concerned with finding a balance between those unfair restrictions on rivals in Japan, like Eizo, and the benefits that Louboutin’s brand would bring. Due to the widespread usage of red soles on women’s high heels by Japanese businesses such as Eizo, the court determined that this was a common business practice in the footwear sector for many years. Following the balance test, the JPO concluded that it would be unfair to give Louboutin a trademark for red-soled high heels as utilizing red as a sole color was a regular business activity.
This agency maintains the stance that registration is not permissible in principle for trademarks that include only a single hue, which is why the JPO refused Louboutin’s trademark registration. It will be recorded, though, if the use shows the generation of distinctiveness. It would appear that the JPO is in the opinion that in order to get a color trademark in Japan, a shade more unique than the internationally renowned red of Louboutin is necessary. Most brands probably won’t be able to reach this extremely high standard.
Despite its stated stance that single-color trademarks are open to consideration, with this decision, Japan may be sending a message to the international community that this is not going to happen anytime soon. The JPO may refuse to provide protection to a brand that does not have substantial popularity in Japan; nevertheless, this does not imply that counterfeit brands can run rampant. Therefore, businesses looking to get trademark protection in Japan should be cognizant that global recognition and popularity may not amount to much if they are not as prominent in Japan.
The denial of Louboutin’s red sole trademark by the Appeal Board of the Japan Patent Office exemplifies the difficulty of trademarking colors in some regions. Japan is in the middle ground when it comes to trademarking colors; the country does not explicitly accept or reject all color trademarks, but the Louboutin denial shows that the threshold is high for companies trying to trademark colors in Japan.
The country has made it quite plain that the process of trademarking a single hue may not be as simple there as it is in other nations, which are far more receptive to the idea of trademarking a color. For the time being, it appears that Japan has prohibited any single-color trademarks, as it is rather difficult to come up with a hue that is more unique than the red soles of Louboutin shoes.
