The Second Circuit Court of Appeals in New York has recently issued its decision on the appeal by Christian Louboutin S.A. (“Louboutin”) against the decision of the US District Court for the Southern District of New York to deny Louboutin the right to stop Yves Saint Laurent (“YSL”) from selling shoes with red coloured outsoles.

Since 1992 Louboutin’s shoes have been characterised by a bright lacquered red outsole and in 2008 Louboutin obtained registered trade mark protection in the US for a lacquered red sole on footwear (the “Red Sole Trade Mark”).

In early 2011, YSL began marketing and selling a line of “monochrome” shoes in various colours including red. In the monochrome style the same colour features on the entire shoe and therefore in the red version the entire shoe is red including the outsole. Louboutin filed a petition at the District Court for an injunction against the sale of YSL’s monochrome red shoes in the US. The District Court denied Louboutin’s request for an injunction. It held that because in the fashion industry single colour trade marks are inherently “functional”, any such registered trade mark would be likely held invalid. Louboutin’s Red Sole Trade Mark was therefore likely not to be enforceable against any third parties including YSL.

In the US, colours can be registered as trade marks if they have acquired a secondary meaning and if the colour does not serve any other significant function. In the US, defendants to a trade mark infringement action can argue that a registered trade mark is “functional” as a defence to that action.

The Second Circuit Court held that the decision of the District Court that a single colour cannot be a valid trade mark registration in the fashion industry was inconsistent with the US Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co. and that the District Court erred by resting its denial of Louboutin’s preliminary injunction motion on that ground. The Supreme Court in Qualitex v Jacobson held that a single colour may be protected as a trade mark “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).”

The Second Circuit Court held that there is no rule per se excluding fashion from the standard rule that a single colour can acquire secondary meaning and function as an indicator of source or origin of goods and services. The Second Circuit Court then went on to find that Louboutin’s Red Sole Trade Mark has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. However, the Court limited the Red Sole Trade Mark to use on footwear where the red outsole contrasts with the colour of the remainder of the shoe and held that, as modified, the Red Sole Trade Mark is entitled to registered trade mark protection.

As the monochrome design employed by YSL for the red version of those shoes does not use Louboutin’s modified Red Sole Trade Mark, the Second Circuit Court did not address whether YSL’s use of a red outsole risks consumer confusion with Louboutin or whether Louboutin’s Red Sole Trade Mark as modified is “functional”.

This decision by the Second Circuit Court is confirmation that in the US you can have a valid trade mark registration for a single colour in certain circumstances even in the fashion industry. This decision will be of some comfort to many companies who hold trade mark registrations in the US for a single colour such as Tiffany who has multiple registrations for the blue colour that it uses on its bags, boxes and other products.