If your brand or product can or has become recognisable by one of its distinguishing features, serious contemplation should be given to protecting this feature through trademark registration and enforcement. It may turn out to be one of the cheapest and most effective forms of marketing your business has ever invested in.
Placing marks on products to identify and protect ownership is nothing of modern origin. The paintings of bison and horses in the Lascaux caves in southwestern France have markings indicating ownership; those paintings are approximately 17,300 years old. The blacksmiths who made swords for the Roman Empire placed stamps and seals on their products to speak to the quality of the weapons. The famous Munich-based brewery Löwenbräu has claimed use of its lion mark since 1383.
The value in a trademark can be remarkable. Forbes magazine commissioned specialist consultancy firm Brand Finance in 2011 to calculate the most valuable brands in the world. The top three were as follows — Google (US$44.3 billion), Microsoft (US$42.8 billion) and Walmart (US$36.2 billion). Please be reminded that these astronomical figures relate to the value of these companies' brands alone. The organisation analysed the potential future returns that could be accrued from each asset, based on an assessment of how much it would cost to license from a third party.
When reading this information about the possible wealth creation from the ownership of valuable trade marks, I couldn't help but recall a piece from comedian Chris Rock's standup performance entitled Never Scared in 2004.
In this performance, the comedian attempted to articulate the difference between being rich and being wealthy. He quips that the dominant basketball centre Shaquille O'Neal is rich, but the man that signs his cheque is wealthy. When citing his own desire for wealth, he mused that he wanted to have money like the family that owns the colour blue. Although the comedian was merely trying to garner a reaction by getting a point across, the ownership of a colour trade mark has come into focus recently in lawsuits involving French footwear designer, Christian Louboutin.
Mr Louboutin's signature style has become the incorporation of a shiny, red-lacquered sole on his footwear. Legend has it that the designer fathered the idea of assigning all of his designs a distinctive red, gloss sole in 1992 after painting bright red nail polish onto the bottom of a pair of shoes, because he felt the shoes "lacked energy". The famed red soles went from strength to strength and truly hit the main-stream when fictional character, Carrie Bradshaw, from HBO's critically acclaimed series Sex & the City, began making Louboutin's an object critical to her survival rather than her desire.
However, Louboutin's attorneys did not secure a trademark registration for the red-lacquer sole until 2008, with a specific colour trade mark known as Pantone — 18 Chinese Red. The trademark was registered in the US and 75 other countries that observe WIPO's conventions. By this point, a litany of other designers, known and unknown, began imitating the red sole concept. Louboutin shoes can range from US$495 to US$6000 and shoe sales represent 95 per cent of the designer's US$300m annual revenue.
By 2011 Louboutin began seeing red as he noticed international brands aggressively marketing something he considered to be his product, which undoubtedly ate into his revenue stream.
The French designer decided to put his shoe down after examining the competing French design house Yves Saint Laurent ("YSL") spring 2011 collection. The YSL "Resort 2011" collection donned red suede shoes with matching soles, alongside purple shoes with purple soles and various other colour shoes with matching soles. However, it was the red suede shoes with the red soles which represented the last straw for Louboutin.
In April of 2011, Louboutin filed a law suit against YSL citing trademark infringement seeking US$1m in damages and an order preventing YSL from manufacturing shoes with red soles. At the first stage of the trial, the District Judge ruled in favour of YSL, reasoning that a single colour without limitation was too broad and inconsistent with the trademark registration system. This decision caused uproar in the fashion and trade mark spheres. Particularly nervous was American luxury jewellry designer Tiffany & Co who successfully registered a trade mark "Tiffany Blue" in 1998 (this colour is technically called robin egg blue), which has become associated with the brand's packaging since Tiffany's Blue Book was first published in 1845.
In the US, if a colour acts as a symbol that distinguishes a trader's goods and identifies their source, without serving any other significant function, then the mark is capable of being registered as a trade mark because the colour would have acquired a "second meaning". Louboutin appealed the District Court's decision on this basis.
In the Appeal, the Circuit Judge sided with Louboutin stating that he saw no reason why a single-colour mark in the specific context of the fashion industry could not acquire secondary meaning — and therefore serve as a brand or source identifier -- if it is used so consistently and prominently by a particular designer that it becomes a symbol, "the primary significance" of which is to identify the source of the product rather than the product itself.
The victory at this level for Louboutin was limited in nature. The court held that Louboutin's trademark offered protection from infringement by designers making shoes of a colour, other than red, and those shoes having red soles. However, if the shoes were monochromatically red (the entire shoe including the sole was red) then Louboutin's trademark would not extend to such protection.
In other words, the red suede shoes with red soles were compliant with the trademark, but any other colour shoe with red soles would infringe upon the trademark.
Louboutin lost an entirely similar battle in the French Supreme Court when it sued Spanish design house Zara in 2011 for infringing the red sole trademark. The French court invalidated Louboutin's trademark; finding that it lacked distinctiveness. The court suggested that the reputation of red shoe soles related to a mere concept, rather than to the trademark. The decisions of the French and American courts are incongruous and leave the business-planning portion of the fashion industry in an undesirable state of flux.