David Flint, partner at MacRoberts, and Rebecca Henderson a trainee at the Scottish law firm, look at the recent case of trademarking colours

Recently, the infamous red-soled Louboutin shoes received a set-back from the European Court of Justice (ECJ) in their on-going battle to protect the style. This case highlights the long-standing struggle to have colours trademarked in the EU – the difference between the US and EU attitudes to the protection of colours has long caused issues for international brand owners.

Louboutin – the arguments

Christian Louboutin holds a trademark in Belgium, The Netherlands and Luxembourg for his use of the colour red on the soles of shoes (the specific shade is known as Pantone 18 1663TP). In 2012, Louboutin brought action against Van Haren for alleged infringement of its trademark. Louboutin were initially granted an injunction against Van Haren, which was appealed to the ECJ.

It was argued by Van Haren that Louboutin’s trademark was invalid because a sign consisting exclusively of a colour cannot be registered as a trademark. During a preliminary assessment of the case, Advocate General Maciej Szpunar agreed with Van Haren and suggested that the trademark would be invalid as the reputation of the mark or proprietor could not be taken into account when assessing the validity of a trademark.

Impact

This is not the first time that Louboutin have had issues enforcing their colour trademark – in 2012 Louboutin sued Yves Saint Laurent SA for copying their signature red sole. The Court of Appeal in New York ruled in favour of Louboutin, stating that the red soles were trademarked, except where the shoe itself was also red. Louboutin have found the US to be more favourable to trademarks consisting of colours.

There are many other worldwide brands who have successfully trademarked a colour in the US – such as Tiffany’s and UPS.

The EU, however, have been more reluctant to award trademarks based on colour alone. Recently Cadbury had their iconic purple trademark (Pantone 2865c) declared invalid by the UK courts after a challenge by Nestle.

How do you successfully register a colour trademark in the EU?

Although the EU have been more stringent in their enforcement, it is still possible to register a colour trademark in the EU. The requirements for registering a trademark must first be met – these are:

1. A sign;

2. Capable of graphical representation; and

3. Capable of distinguishing goods/services of one undertaking from those of other undertakings.

For example, in the Cadbury case, the UK courts found that Cadbury’s trademark of the colour purple had not satisfied conditions 1 or 2 as they had stated the colour was to be “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface of the packaging.” The UK court held that this was not sufficiently descriptive or specific to satisfy tests 1 and 2.

The court did comment that had Cadbury left out “predominant” in their application, the colour trademark would have been sufficiently sufficient and therefore valid.

Conclusions

Colour trademarks are very difficult to obtain due to the difficulty in proving that a specific colour distinguishes goods/services from competitors. Brand owners will often have to demonstrate considerable use and goodwill in the colour that sets it apart from competitors in the eyes of consumers.

If you have a specific colour that sets your goods apart from competitors and you feel this warrants trademark protection, MacRoberts can assist in the registration and protection of trademarks in the UK, EU and worldwide.