RCDs are colour-blind (and quite right too)

A recent case in The Netherlands shows an important difference between trade mark practice and registered designs. Controversially, OHIM treats black-and-white trade marks as just that (whereas most practitioners used to believe that a registration in black-and-white covered all colours), but a registered Community design presented in black-and-white protects the owner against use of the design in any colour: Case T-68/10 Sphere Time v OHIM, para 82 (General Court), followed on 2 September by the District Court in The Hague in Wibit-Sports GmbH v Aquaparx (thanks to the Class 99 blog for the information). That seems hardly surprising, and is only really noteworthy because of the stupid rule about trade marks. It's another matter if colour is important for the novelty or individual character of the design (in other words, it's a feature of the design that the owner wants to protect), and if the design is filed in colour it is right to assume that the colour is important and to limit protection accordingly, in line with 'traditional' trade mark practice. But if the registered design protects the shape of the product (which traditionally is what design protection has done, of course) the colour used by the infringer should make no difference. Actually, an infringer trying to use this as a defence is grasping at straws, rather like a design owner who claims that unregistered Community design right has been infringed ....
This remains, however, a topical issue with the Trunki appeal on its way to the Supreme Court. There, the Court of Appeal took the view that the striking colour combination which was shown in the RCD was significant, and not present in the accused products. If only they had filed in B&W. But the Court of Justice's decision in the KitKat case (a trade marks case, though a shape trade mark and therefore right on the boundary of the designs field) tells us that features of a product may only be protected by trade mark registration if they are used by the consumer, to the exclusion of other indicia, as an indication of origin, which strikes me as being on all fours with the Trunki design case. However, I am perhaps digressing a little, and the KitKat case is exciting enough to merit separate consideration.

Red Shoes

Can the colour of the sole of a shoe be protected as a trade mark? Christian Louboutin has registrations in the EC system and in the US, and probably lots of other places too. And the colour appears to be pretty distinctive. It's been in use for years, though apparently Valentino has produced shoes with red soles since the ’60s.

The other week Louboutin failed to convince a Federal judge in New York that it stood a good enough chance of winning an infringement case against Yves St Laurent, and was refused an injunction pending trial  (Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.). Read all about it on my friend Mike Atkins's Seattle Trademark Lawyer blog here. Or on my friend Ron Coleman's Likeihood of Confusion blog, here (posting by Matthew David Brozik, another EC fan). Or (a late addition) Fox Rothschild's Fashion Law Blog, written in a very engaging style by Staci Riordan - who sets out three reasons why Louboutin failed, including its "awful" trade mark.

Now, there are big differences between trade mark laws here and on the other side of the Atlantic, not all down to the malign (in the case of trade marks) influence of the European Union. In both, a colour may be registered as a trade mark, but it will have a hard time demonstrating sufficient distinctiveness, and rightly so. Before exclusive rights can be granted in something as mundane as a colour, which then becomes unavailable to others in the same business, a stern test must be passed. Establishing sufficient distinctiveness will often entail limiting the scope of protection, perhaps by specifying a Pantone® number. "Red" will rarely be enough. In the US, Qualitex Co. v. Jacobson Prods. Co. established that a non-functional colour can acquire distinctiveness, but it must be easier for dry cleaning equipment than for fashion items. Dry cleaning companies probably don't get too hung up about the colour of the equipment they use. Pink for glass fibre insulating material (Corning, if I remember correctly) is also acceptable - an arbitrary choice of colour, serving as a badge of origin, not interfering with the commercial free speech of the competition. Maybe one test would be, if the question "why?" comes immediately to mind, it's a strong trade mark ...

Colour plays a much more important role in the fashion industry than it does in the dry cleaning equipment or home insulation sectors. It will accordingly be harder to register one as a trade mark. Indeed it should be very, very difficult, especially when it's an unspecific term like just "red", and the judge, the Honorable Victor Marrero of the United States District Court for the Southern District of New York, who reportedly cracked every shoe- and foot-related joke known to humankind in the course of his judgment, was not convinced that the trade mark owner would succeed at trial. I'd like to think the same thing would happen here: not that I expect the generosity of the relevant trade mark office to become exhausted, although they should be taking steps to keep rubbish off their registers, but at least if it came before a judge.