Ask nearly anyone in the fashion industry who has tried to get legal protection to protect apparel designs or features and you’ll quickly find that there are some who have tried, yet precious few who have actually succeded. Louboutin’s victory in a New York federal appellate court against its competitor Yves St. Laurent highlights how a fashion designer can be successful in protecting certain design elements of shoes or apparel in the United States. It also provides a better roadmap as to how to do it successfully.
Why the Louboutin case is such a high-profile decision is because of the lack of options available to legally protect apparel designs in the United States. Here, intellectual property attorneys’ only options is to use a patchwork of trademark, patent, and copyright law to get even a small amount of protection for apparel designs. The reasons for the limitation on the protection of apparel in the U.S. relate to past legal decisions on the inherent nature and function of clothing itself, a study of which is outside the scope of this article.
In contrast, much of Europe does not share the “Wild West” legal environment for the protection of apparel that has become acceted in the the United States (though this decision confirms that the US is catching up). The heritage of protecting apparel designs in Europe is old. In fact, one can trace the roots of the European Regulation on Community Designs (one of the laws under which apparel design is protected in the European Union, which came into force in 2002) to the 15th Century French Monarch, who granted exclusive rights for the fabrication of textiles.
But now, thanks to a New York Federal appeals court, French fashion house Christian Louboutin is officially entitled to legal rights in the United States in its signature red-sole shoes with a cotnrasting upper color (“Red Sole Mark”). The appeals court ruled Wednesday that Louboutin has exclusive trademark rights in the Red Sole Mark. The catch is that the court limited Louboutin’s trademark rights to red color soles with contrasting colors of the shoe upper.
Fashion Industry Impact of the Ruling
This ruling means that color marks on shoes, apparel and accessories can be exclusive trademarks under certain conditions. Also, the ruling means that fashion designers, makers, distributors and retailers that sell shoes, apparel and accessories with a copy or imitation of a Color Mark may be liable in a law suit, pay money damages, and may even have to stop distribution and sale if a court orders.
The ruling is also a reminder for potential business opportunity: if a company successfully markets and sells a sufficient amount of product with a color mark (one of the reasons Louboutin won was because there was such great consumer recognition of his Color Mark), there could be a good chance that the mark would be protectable. That would mean an ability of the color mark owner to exclude all competitors from using any color in the same manner that would be likely to cause confusion in the marketplace as to the the source of the goods. Of course, imitators, “copyists” or counterfeiters would be left with few defenses.
The limits to how color is utilized on apparel is only limited by imagination and likewise so are the number of options to exclude competitors. But one cannot simply “use” color and expect to acquire valuable rights. There are a few key steps which much be taken in order to get these rights.
Requirements for Color Marks to be Valid
For Color Marks to be valid in the US, the following conditions should be observed:
- The color must be unique in the market for the footwear, apparel or accessory to which it is applied and must be of contrasting color or a multicolor combination.
- The color cannot have a functional purpose—with Louboutin’s red sole shoes, there is not a competitive need for soles to be lacquered in the color red. The sole can be in any color and still function according to its purpose.
- Preferably, the maker or distributor of the footwear, apparel or accessory should engage in an advertising and marketing campaign calling attention to the color mark as signifying a product emanating from the fashion designer or maker. For example, “Look for the green buttonhole edges on shirts only from Tommy Hilfiger.” And famous designer, Gucci, has successfully enforced its green-red-green stripe, which was registered as a trademark in 1979.
- The fashion designer or maker of the footwear, apparel or accessory must be able to show that the color marking is not merely decorative, but has attained a customer association such that consumers, on seeing the color mark, know that it comes from a single source (known to the courts as “secondary meaning’). To show the color is distinctive and has customer association with a particular source of products, the fashion designer or maker typically must show the results of a customer survey or high sales volume and high advertising and promotional expenses. Finally,
- The fashion designer, maker or trademark owner should preferably apply to register the color marking as a trademark around the globe where the items will be sold.
Keeping Exclusive Rights
The first step to keeping exclusive trademark rights is to abide by the maxim: Use it or lose it. It’s not enough to just conceive of a design, make some shoes or apparel, and never offer them for sale. The mark (in this case, the red contrasting sole) must be offered for sale.
To maintain these exclusive trademark rights, the fashion designer or maker must take immediate steps to stop other designers, makers and retailers from using the same color or hue on the footwear, apparel or accessories. Under the trademark law, allowing others to imitate these color markings, over time, causes an abandonment of rights and a dedication to the public of trademark rights. The essence of trademark rights is that a trademark indicates only a single source for the footwear, apparel or accessory with the trademark marking. One of the initial steps usually taken to stop imitation by others is the sending of cease and desist letter. In the end, if the imitation continues unabated, the owner of the trademark rights must sue the maker, the distributor, the retailer or all them to obtain a court order to stop infringement.
Other Color Markings on Footwear, Apparel or Accessories
While the conclusions of the Louboutin decision are limited to its particular facts, the decision raises the prospect that the same or another federal appeals court will reach a similar result involving the same principles with similar facts. Since the Louboutin case is well-reasoned, it is more likely to be followed by other federal and state courts in the U.S. When presented with a case of close imitation on footwear, apparel or accessories of a single or multi-color marking that has acquired a meaning associated with the maker or designer through sales and advertising, the court may reach the same result based on the conclusions and reasoning in the Louboutin decision.