If you are a fashion designer, you should understand how a trade mark can protect aspects of your designs. In Australia, you can register shapes and colours as trade marks, as well as words and logos. Therefore, owners of fashion companies can trade mark the patterns, shapes and colours associated with their brand. That is precisely what Christian Louboutin did back in 2010. To protect his signature look, he registered his red-soled heels as a trade mark. However, in 2012, the validity of the trade mark was brought into question. This article explains how you can register shapes and colours as trade marks in light of the Louboutin case.

Louboutin Trade Mark Infringement Claim

In Australia, trade mark registration protects shapes associated with a brand. This is not the case in Europe. Under European law, you cannot register a shape as a trade mark unless it adds substantial value or a functional aspect to the goods. This limitation was fundamental to the debate of the Louboutin trade mark.

In 2012, Dutch shoe company, Van Haren, started selling its own version of the Louboutin red-soled heels in the Netherlands. When Louboutin found out, he brought a trade mark infringement claim against Van Haren in the European Court of Justice (ECJ). In return, Van Haren brought a claim against the validity of Louboutin’s trade mark. The claim was on the basis the trade mark protected a shape, and therefore should not be registered under European law. The ECJ’s Advocate General found the red-sole trade mark could not be relied upon, as it related to a shape.

However, the ECJ overturned the Advocate General’s ruling. It held that Louboutin’s trade mark did not relate to a specific shape. Instead, it was protected in relation to the colour and the position of the mark. As such, the ECJ found that the red sole is not limited by the trade mark restrictions in the European Union.

What Happens Now?

The Louboutin case will now go back to the District Court of The Hague. Assuming the court upholds the ECJ’s decision, the case might encourage designers to trade mark distinctive aspects of their brands. When considering what aspects of your brand stand out, you should think about the colours and shapes you use.

Colours as Trade Marks

The process of registration for a colour trade mark can be difficult. The application must include a description of the trade mark. You should also attach an illustration of how you will apply the colour to the goods. Additionally, IP Australia requires significant evidence of the use of that colour in relation to the associated goods or services.

The evidence supplied needs to show that:

  • consumers view the colour as synonymous with the goods or service;
  • the colour alone is inherently capable of distinguishing the goods or service; and
  • the colour is the trade mark and not just a part of the look or packaging.

However, you cannot trade mark all colours, despite evidence you provide. You cannot protect a functional colour, which normally denotes a meaning people associate with a good or service. For example, you cannot trade mark red, green and yellow in relation to a traffic sign, as they already convey an accepted meaning for road rules.

Shapes as Trade Marks

An application for a shape trade mark must include descriptions and representations of the mark you are using.

In addition, you must be able to prove that the shape:

  • distinguishes your goods or services from other brands; and
  • is not the same as a functional or existing shape.

The best shape trade marks are those that people do not expect for you to use in association with your goods. However, as shape trade marks are difficult to obtain, you may wish to consider a design registration if you have not publicly disclosed it.

What to Consider When Registering a Shape or Colour Trade Mark

  1. Do your research: Are there any other similar brands or products that use the same shape or colour you want to trade mark? Even if these businesses do not have a trade mark, using it can present an obstacle for you.
  2. Have the evidence to back it up: Ensure you have evidence of the shape or colour in relation to your product that shows it is distinguishable from other brands.
  3. Choose the right colour: Attempting to trade mark a single colour will be very difficult. Combinations or variants of colours will have more chance of success.
  4. Get the description right: The description and pictorial representation of the shape or colour trade mark should clearly outline the intended use of it. For example: “The trade mark consists of the colour red, applied to the sole of a high heeled shoe as shown in the representations attached to the application form.”

Key Takeaways

If you have a fashion brand, remember that you can register various aspects of your design as a trade mark. In addition to your logo and slogans, you can trade mark a colour or shape that consumers easily recognise. If you need help registering or defending a colour trade mark, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Alexandra Shaw
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