IP News
Claiming the Color Red Part II
On 05 September 2012, the United States Court of Appeals Second Circuit
(Jose A. Cabranes, Circuit Judge) issued a decision1
in the Christian Louboutin (“Louboutin”) vs. Yves Saint Laurent (“YSL”)
case raised to it on appeal from the 10 August 2011 order of the United
States District Court for the Southern District of New York. The
District Court denied a motion for a preliminary injunction against
alleged trademark infringement by YSL of Louboutin’s “Red Sole” mark.
The motion sought to stop YSL from selling and marketing shoes that
bears the same or a confusingly similar shade of red that is Louboutin’s
Red Sole Mark.
The Second Circuit succinctly ruled that the District Court’s decision
that a “single color can never serve as a trademark in the fashion
industry is inconsistent with the U.S. Supreme Court’s decision in
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995)
2” and that Louboutin’s red sole mark is a valid trademark.
However, the Second Circuit court ruled that YSL did not commit any
infringement with its all red shoe.
It explained that Louboutin’s trademark, which is the red lacquered
outsole found in its high-fashion shoes, “has acquired limited secondary
meaning3 as a distinctive symbol
that identifies the Louboutin brand.” It ruled that Louboutin held a
valid trademark over the red outsole because of such distinctiveness.
It said: “we see no reason why a single-color mark in the specific
context of the fashion industry could not acquire secondary meaning―and
therefore serve as a brand or source identifier―if it is used so
consistently and prominently by a particular designer that it becomes a
symbol, ‘the primary significance’ of which is ‘to identify the source
of the product rather than the product itself.’”
However, the Second Circuit limited the use of the Louboutin Red Sole
trademark to a red outsole which is different from the color of the rest
of the shoe. It opined that in such a scenario, where there is a
contrast of colors, the red sole is protected by trademark because then
it becomes distinct. The Second Circuit was careful in clarifying that
the secondary meaning of the red lacquered outsole exists when
accompanied by the remainder of the shoe in a contrasting color. “It is
the contrast between the sole and the upper that causes the sole
to ‘pop,’ and to distinguish its creator.” It directed the U.S. Patent
and Trademark Office to modify and limit Louboutin’s Red Sole trademark
to such situations.
The Second Circuit clarified that the use of a red outsole in all
situations cannot be protected by trademark and declined to protect
Louboutin’s Red Sole Mark where it forms part of a monochromatic design
– one similar to the shoe designed by YSL. Hence, according to the
Second Circuit, the red sole in YSL’s all red shoe “is not a use of
Louboutin’s modified trademark.” However, it did not delve on the issues
of consumer confusion and functionality.
It reversed the District Court’s order denying protection to
Louboutin’s modified trademark consisting of contrasting red lacquered
soles. It ruled that Louboutin’s motion to prevent YSL from using a red
sole as part of a monochromatic or completely red shoe, could not be
given due course and it partly affirmed the District Court’s order on
that matter and remanded back to the District Court for further
proceedings with regard to YSL’s counterclaims.
---------------
1
Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc.
(No. 11-3303-cv (2d Cir. Sept. 5, 2012).
2 According to the
Qualitex case, “sometimes[ ] a color will meet ordinary legal
trademark requirements[, a]nd, when it does so, no special legal rule
prevents color alone from serving as a trademark.”
3 The Second Circuit stated
that secondary meaning is “acquired when ‘in the minds of the public,
the primary significance of a product feature . . . is to identify the
source of the product rather than the product itself.’”
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