With Valentine’s Day here, we all know that red signifies love, but who knows what company designs high heels with red-lacquered soles? American fashionistas, and those in the know, will yell the name of shoe designer Christian Louboutin. The Second Circuit Court of Appeals long ago accepted Christian Louboutin’s representations to this effect when in 2012 it upheld the trademark rights of the high-fashion shoe designer. The fashion industry is now on alert as the Court of Justice of the European Union is primed to deliver its long-awaited judgment on the subject of the trademarkability of color in that venue.

Christian Louboutin registered its red-lacquered outer sole trademark in Benelux (Belgium, the Netherlands and Luxembourg) in 2013. Shortly thereafter, Louboutin brought suit against Van Haren, a company that operates shoe retail outlets in the Netherlands and was selling high-heeled women’s shoes with red soles. The matter was referred to the Court of Justice of the European Union.

In a February 6, 2018 press release on the matter, the appointed Advocate General, whose role is to propose a legal solution to the Court of Justice, proposed that Louboutin be granted a trademark for the shape of a sole, in the color red. The Advocate General referenced European law directives on eligibility for trademark protection, of which shape is listed but color is absent, and further stated that he doubts that the color red serves a trademark function when used outside of the context of a red sole. The matter is now in the hands of the judges for the Court of Justice, whose final opinion on the matter is forthcoming.

State-side, Christian Louboutin registered the red-lacquered outsole as a trademark in 2008, claiming the color red as a feature of the mark. The registration was ultimately narrowed by the Second Circuit’s conclusion that it is the red-lacquered outsole that contrasts with the remainder of the shoe that had acquired secondary meaning, and is therefore entitled to trademark protection. See Christian Louboutin v. Yves Saint Laurent America, 696 F.3d 206 (2d Cir. 2012). The corollary is, without the contrast in color, there is no trademark protection.

Decades ago, the U.S. Supreme Court addressed the issue of trademark rights in a color in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). There, it concluded that color alone could serve as a trademark, but not when the color served some function of the product. Today, the doctrine of aesthetic functionality remains the law. That legal doctrine holds that trademark protection of a color will not be granted where doing so would significantly hinder competition, or put competitors at a “significant non-reputation-related disadvantage” because the color is needed to make the product functional. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001). Determinations of “significant hindrance to competition” are fact-intensive and often narrowly determined. Moreover, for a company to gain rights in a color, expansive and extensive uses must be proven, along with proof that consumers identify the source of the product via the color.

Based upon this body of law, Christian Louboutin was able to obtain trademark protection for its red soles but only when contrasted with the remainder of the shoe, Dow Corning received trademark protection for its pink insulation, and Tiffany may protect its signature robin’s-egg blue.

Other trademark owners have had varying success. For example, yellow has run the gamut of trademark protection depending on product. Manufacturing giant 3M trademarked yellow as used on its Post-It Notes, and in 2015 tool-maker DeWalt obtained a $54 million verdict against a company using its yellow and black color scheme on power tools. In August of 2017, however, General Mills was defeated in its two-year attempt before the U.S. Trademark Office to protect the yellow of its Cheerios box even after 76 years of use, because too many other cereal companies used the color as well.

Whether in the U.S. or Europe, like the designer of the red soles, businesses seeking trademark protections in color may have confidence that such protection is possible, if approached in a focused and carefully crafted manner. Whether red prevails as the trademark designation of high fashion women’s shoes or not, it certainly prevails as a signifier of love.