Roses are red, violets are blue…Louboutin’s appealing, Tiffany & Co care too

We previously blogged about the growing trade mark dispute between Christian Louboutin and Yves Saint Laurent (YSL).  The dispute relates to the manufacture and sale of red-soled shoes by YSL, in alleged infringement of Louboutin’s trade mark.  As an update, the New York District Court has refused to rule that red soled shoes are exclusively the domain of Christian Louboutin.  Read more to find out how Tiffany & Co has put its bejewelled fingers in the mix.

Judge Victor Marrero’s decision is available online here.  Marrero J acknowledged that the red soles had become so famous that  Louboutin had created a product “so eccentric and striking that it is easily perceived and remembered.”  However, Marrero J concluded that Louboutin had not established a sufficient likelihood that it would succeed on its claims to warrant the granting of a preliminary injunction.  The judge noted that “because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition… Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”

Marrero J said that “awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants.  YSL has various reasons for seeking to use red on its outsole – for example, to reference traditional Chinese lacquer ware, to create a monochromatic shoe, and to create a cohesive look consisting of color-coordinating shoes and garments.”   We are not sure if those are the submissions YSL included in its defence, or whether Marrero J is displaying an impressive interest in aesthetic matters.

So now, you ask, what does this have to do with Tiffany & Co?

With such a lucrative monopoly over  robin’s-egg blue (that’s right, its actually known as ‘Tiffany Blue®’), Tiffany & Co have thrown their support behind Louboutin, filing this amicus curiae brief in support of Louboutin’s appeal.  In the brief Tiffany alleges that “the District Court’ opinion in this case adopted a sweeping and  unprecedented per se rule against granting trademark protection to any single color that is used on any “fashion item,” even where the color has achieved “secondary meaning” and is associated with a single brand.  Tiffany urges the Court to reject the adoption of these sweeping rules and endorse a case-by-case analysis of the issues, which would give Tiffany far more surety in relation to its own rights. 

From an Australian perspective, significant evidence may be required to obtain trade mark rights in a colour due to its inherently ornamental nature.  However, once secondary meaning is established (which in the present case may mean that consumers will recognise the source of a shoe as Louboutin because of the flash of red sole), there is usually every reason to expect trade mark protection to follow.  Perhaps Marrero J’s decision can be explained by its interlocutory nature.

The apparently conservative nature of Marrero J’s decision can be contrasted to some good news for Cadbury this week, which received confirmation from the UK trade marks office that it had trade mark rights in the colour purple, following objections from Nestle.  

Stay tuned for updates on this controversial matter.  In the mean time, IP Whiteboard is wondering whether any of the legal advisers have negotiated an in-kind agreement with their clients…

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