Christian Louboutin had established reputation in its red sole as a trade mark but only in relation to shoes with a contrasting coloured upper, not monochromatic red shoes.

Colour trade marks are back in the spotlight – or should that be "on the catwalk"? – with the recent dispute between Christian Louboutin and Yves St Laurent.

Christian Louboutin, the high-end fashion shoe brand known for its trade marked red sole, sued Yves St Laurent in New York for infringing its registered trade mark after Yves St Laurent produced a totally red shoe, including a red sole (Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., US 2nd Circuit 11-3303-cv).

Yves St Laurent counterclaimed that Christian Louboutin's registration for the red sole mark was not validly registered under US law.

Prêt-à-porter: The trial

A number of other parties appeared making representations to the court on the issue of validity including the International Trademark Association, Tiffany & Co and a law professor from Georgetown University in Washington, DC.

At trial, the judge held that single colours operated functionally in the fashion industry and lacked any trade mark character, which meant that Christian Louboutin's registration was likely invalid.

The September Issue: the Appeal Court's findings

The Appeals Court held that a close examination was required of how colours were used in the relevant trade. There was no reason why trade reputation or "secondary meaning" could not develop in a red sole indicating a unique trade source.

On the facts, Christian Louboutin had established reputation in its red sole as a trade mark but only in relation to shoes with a contrasting coloured upper, not monochromatic red shoes.

The Appeals Court modified Christian Louboutin's trade mark registration and this allowed Yves St Laurent to avoid a finding of infringement.

The position in Australia

In Australia, the Christian Louboutin application for registration of the red sole trade mark has been accepted on the provision of evidence of distinctiveness/secondary meaning, but without any restriction in relation to the colour of the rest of the shoe.