Can color be registered as a trademark?

Registration authorizes the owner to an exclusive use of their trademark. In the light of EU regulations, a trademark may consist of any sign or graphic form, but it must have elements that distinguish it from the goods and services of another entrepreneur. Is a red sole created by a French designer a sufficient feature to enable its registration as trademark? This will soon be decided by the Court of Justice of the European Union.

The primary function of trademarks is identification, which helps distinguish goods in terms of their origin from a particular entrepreneur.  This is extremely important if a particular brand already has a well-established reputation. Trademarks also fulfill advertising and qualitative functions, which indicate that a given product offered by a particular entrepreneur should be associated with certain values appreciated by consumers. A prospective buyer is convinced that all goods under a given trademark are of the same impeccable quality.

Color as a leading marketing force

Over the past few years, many entrepreneurs have tended to use certain colors in their business activities. Depending on the industry, this may concern goods but also shop, salon or service point fit-outs. No doubt most of us can name the brand associated with red soles, green jewelry packs, or purple chocolates.

A question arises: Can color be registered as a trademark? Soon, the Court of Justice of the European Union will have to address this important issue related to the possibility of claiming the exclusivity of the shoe sole color.

Undoubtedly, many women in the world want to have their Christian Louboutin pair of red soled shoes. The cheapest pair of high heels costs several times more than similar shoes by other manufacturers. Due to their wide recognition and reputation gained over the past decades, Louboutin has been trying to effectively protect its rights.  In 2009, the designer applied to the EU Office for Harmonization in the Internal Market for registration of the Benelux trademark, which is a graphical symbol containing a red sole.  This symbol was described as “consisting of the color red applied to the sole of a shoe as shown (the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark).” The means of notification indicates that Louboutin wants to claim only the red color of the sole as trademark, and not the contour or the shape as a whole.

Will the monopoly on the red sole be limited?

When granted trademark protection, Louboutin filed an action with the District Court of The Hague (Rechtbank Den Haag) for a declaration of infringement committed by Van Haren, who sold womens high heeled shoes in the Netherlands with a red sole. The Dutch court upheld the action, but Van Haren appealed against it, quoting the invalidity of the disputed trademark. Van Haren argued the trademark in question was in fact a two-dimensional mark, in this case red, which, when applied to the shoe soles, corresponds to the shape of shoes and significantly increases their value. According to the District Court in The Hague, the disputed trademark is not simply a two-dimensional mark because it is inseparable from the shoe sole. It emphasized that although it had been established the trademark was part of the product, it is not clear whether the notion of “shape” increasing the value of the product is limited to only three-dimensional properties of the product, such as contours, measurements and volume of the product, excluding colors.

As a result, the District Court of The Hague decided to suspend the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their color?

Above mentioned Art. 3(1)(e)(iii) of Directive 2008/95 indicates the grounds for refusal or annulment of the trademark registration, and emphasizes that trademarks which consist exclusively of a shape increasing the value of the goods tend not to be registered, and if they have already been registered — that they may be regarded as invalid.

An opinion on this case was presented by Advocate General Maciej Szpunar on 22 June 2017. It should be noted that the opinions of Advocates General are not binding on the judges of the Court of Justice or national courts, but the content of the judgment is often consistent with the content of their opinion.

The Advocate General considered the possibility of qualifying the Louboutin’s trademark in terms of two categories, namely the mark consisting of the shape of the product, which also required the color protection, versus the mark consisting of the color itself. He emphasized that the presence of a color applied to an element of the surface of the goods can be regarded as a characteristic reflected in the shape of the goods. Furthermore, he pointed out that color can be an essential practical characteristic of certain goods, such that the monopolization of color, in relation to an element of the shape of the goods, would remove the freedom of competitors to offer goods incorporating the same functionality.

This case indicates that the risk of monopolizing the essential characteristics of a given product may also arise in relation to other types of trademarks — such as motion, sound, olfactory or taste trademarks — which may also coincide with an external feature of the product. It should be taken into consideration that the concept of trademark is broad, hence the catalog of such features is open. There was, for instance, a case of registering the smell of fresh cut grass of tennis balls. The Advocate General emphasized that regardless of how such marks are classified, it is important that the interest in keeping certain signs in the public domain can be taken into account when they are examined with a view to registration.

In his opinion, Maciej Szpunar concludes that although Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain color. The concept of a shape which “gives substantial value” to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account. [1]

In view of such a strict interpretation of the provisions, the Advocate General stated a trademark registered in the same manner as that of Louboutin should not be subject to registration and emphasized the possibility of invalidation of that mark for the reasons of failure to fulfill the conditions laid down in the Directive. The situation would be different if the Advocate General qualified the Louboutin’s mark as a color trademark in itself.

Undoubtedly, entrepreneurs are eagerly awaiting the decision of the Court of Justice of the European Union as to whether Louboutin will continue to own the red sole. However, will other manufacturers be given the green light — at least under the law of trademarks. This case does not concern the issue of copyright protection of shoes, allegations of unfair competition or European registration as a Community industrial design.