What’s in a Color? The Battle Between Aesthetics and Functionality
Reviewed by Kyu Hee Chu
There is no doubt about the possibility of trademarking a color. This principle has been established in previous cases, and so far it has been a generally accepted principle. This was certainly the basis of the 2008 trademark registration obtained by Christian Loubuotin for his “Lacquered Red” for high fashion shoes.
As we have previously referred to in this blog, Christian Louboutin filed suit against another high fashion giant, Yves Saint Laurent, for the use of its famous Red Sole in one of their collections in 2011. As part of this suit, Louboutin filed for a preliminary injunction in order to restrain YSL from continuing to sell the shoes in question for the duration of the proceeding. To Louboutin’s surprise, Judge Marrero disagreed with his claims, and even questioned the validity of its trademark, which he based on a functionality bar. This functionality feature of color, Judge Marrero stated, has a special connotation in the fashion world and should not have the same benefits conferred to other areas. He referred to the color as holding a very important role in the fashion industry, given its ornamental and aesthetic utility.
But, what exactly is this functionality bar? It has been established that a purely aesthetic product feature can be subject to trademark protection if it is source-identifying and non-functional. However, if that aesthetic feature can be considered as “functional”, then it would be anti-competitive to allow one brand or company to monopolize this feature, given the competitive need to copy this ornamental feature in the product. This is known as the “Aesthetic Functionality” doctrine.
In the Louboutin v. YSL case, Judge Marrero found that the red sole used by Louboutin was aesthetically functional. He based this decision on the fact that color served a very important role in the Fashion industry, since it defines trends and seasons. In addition, he referred to a statement made my Christian Louboutin himself, where he indicated that he chose the red color because it “energizes” the shoes, is “sexy” and “attracts men to the women who wear his shoes”, and could be considered non trademark functions of the red sole. Ultimately, the judge questioned the functionality feature that color has in the fashion industry, thus finding it not eligible for trademark protection.
So what exactly is at stake here in this decision? This decision may have very negative effects on the general principle of using color as a trademark, regardless of the recognition or secondary meaning obtained from consumers. In addition, it would established that when the color of a product is found to be aesthetically appealing to the consumer, then this would be considered as a functional feature, therefore, not subject to trademark.
As per Louboutin’s Red Soles, this blogger still considers the red color to be a non functional feature, which we can certainly affirm is a very famous source identifier for Louboutin’s brand. We shall wait and see…