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Trademark law: can a colour be a shape?


In another twist to the ongoing litigation over Louboutin’s red sole trademark, the IPKat reported last week that a new reference for a preliminary ruling had been made to the Court of Justice of the European Union (CJEU). The issue in question? Do the provisions to protect ‘shapes’ as trademarks also cover colours?

Colours form some of the world’s most recognisable and valuable trademark rights, but they can often be difficult to register as trademark rights – and enforce. So has found luxury shoe designer Christian Louboutin, which has faced a series of battles in recent years to enforce trademark protection for its distinctive red sole.

In the latest twist in the Louboutin saga, the CJEU has been asked to rule on whether the concept of ‘shape’ within Article 3(1)(e)(iii) of the EC Trademark Directive 2008/95 is limited to three-dimensional elements of a product or also includes two-dimensional elements such as colours. If it can be argued that ‘shape’ in this context also covers colours, then Louboutin’s challengers will be able to call upon the absolute grounds for refusal of registration contained in the Article. This prevents the registration of a sign that gives substantial value to the goods; in other words, if it can be shown that a consumer purchases a shoe solely for the red sole, then the trademark is invalid.

The question before the CJEU is perhaps not as far-fetched as it sounds. The same query was considered by Belgium’s Court of Appeal in November 2014 as part of the dispute between Louboutin and shoe retailer Van Dalen, which had also attempted to sell shoes featuring a red sole. In that dispute, the Court eventually ruled that the red sole trademark should not be regarded as a shape mark, but instead was an element of a figurative mark. It also held that the red sole trademark had acquired distinctiveness through consistent use.

Why is it so hard to register a colour as a trademark?
As Louboutin’s ongoing battles to safeguard its red sole trademark have shown, it can be difficult for companies to assert their rights to use a particular colour or colour combination. The reality is that, as popular as colour-related trademark applications are among brand owners, many trademark offices are reluctant to accept such registrations, particularly for single colour trademarks, unless they have been heavily promoted or in use for many years.

Novagraaf’s Alastair Rawlence explains: “While a single colour may have sufficient distinctive character to be registrable in theory, the test for many trademark offices centres on whether the colour is ‘distinctive’ enough for the public to associate it with the brand owner alone.

In most cases, the public would not necessarily view a generic colour in the same manner as a word or figurative mark. The exception can be found with brands that have built up a long-term association with a certain colour: Cadbury’s purple, for example or Tiffany’s signature blue packaging. But, even they have faced challenges in asserting those rights.”

However, there are certain steps that brand owners can take to support the validity of colour trademark registrations: “Brands can improve their chances of trademark registration if they seek to file a more ‘distinctive’ colour-based trademark; for example, a unique combination of colours or a combination of words or symbols and colours, rather than a single colour,” Alastair advises, “making sure that when the brand is advertised attention is drawn to the colour as a source of brand origin.”

For further information on registering colours as trademarks click here, or speak to your Novagraaf consultant.