Most business owners are familiar with registering a trade mark for their name or logo. But you can also register sounds, shapes, colours or scents provided there is something unique and distinctive.

 

Did You Know?

The three stripes. The tick. The red sole. These designs have one thing in common – they’re all registered trade marks. Retail kings like Adidas, Nike, Converse, Chanel and Christian Louboutin, have all registered a trade mark to protect their shoe brand.

 

Creating a signature style for your shoes is difficult. In this article, we help you avoid any ‘sole’ destroying mishaps by explaining which parts of a shoe attract IP protection.

Lesser-Known Trade Marks

Colour, especially in the fashion industry, can provide a garment or accessory with a distinctive look and feel. If you intend to apply for a colour trade mark, your application should include:

  • a clear and concise description of the trade mark;
  • an illustration of how you will use the colour and the way in which it will be applied to the goods; and
  • an example of the colour or colour combination.

Shape trade marks are another example of non-traditional marks. You will need to show IP Australia that the shape:

  • distinguishes your goods or services from other traders; and
  • is not a copy of a shape that already exists in the marketplace.

A Lesson from Louboutin

Christian Louboutin’s signature red-lacquered soles are recognised internationally. Despite registering as a trade mark in a number of countries, it has birthed multiple infringement claims.

In 2011, Christian Louboutin argued that Yves Saint Laurent was using the same shade of red on the soles of its shoes in its Cruise 2011 collection. To succeed in its trade mark infringement claim, Louboutin had to prove that the two shoes are likely to confuse consumers. Unfortunately for Christian Louboutin, their claim was unsuccessful. As Yves Saint Laurent’s shoe collection included a range of colours, the Court decided that the fashion label should not be refrained from featuring a red shoe because of Christian Louboutin’s signature red sole.

More recently, the Federal Supreme Court in Switzerland held that the red soles are “merely an aesthetic element” which precludes them for trade mark protection. The fact that other countries upheld the mark did not influence the ruling in Switzerland.

Australian Requirement for Use of a Trade Mark

If you apply to register a lesser-know trade mark, such as a colour or shape, it’s sensible to anticipate an objection from IP Australia. This should not deter your application because there are ways to overcome an objection.

A common method to show why you should be entitled to the mark is to provide evidence of use, such as:

  • a brief history of the trade mark and its connecting with the goods or services;
  • examples of marketing and advertising of the trade mark in use;
  • evidence of sales of your product attached to the trade mark; and
  • customer reviews or comments.

If you have not begun commercialising your product, you can show intended use through:

  • business plans demonstrating use of the trade mark;
  • marketing or advertising plans; and
  • evidence of the costs incurred for preparing the use of the mark.

Key Takeaways

If your winter shoe collection includes a distinctive colour or shape, you should consider registering a trade mark for these elements. It’s prudent to anticipate objections to your application for a non-traditional mark but you can overcome these by providing substantial evidence of use. If you have any questions or need assistance registering your colour or shape mark, get in touch with our specialist IP lawyers on 1300 544 755.

Alexandra Shaw
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