In the world of luxury brand retailers supporting a rival is almost unheard of, but last month Tiffany and Company took the bold step of supporting Christian Laboutin by filing an “amicus curiae” brief providing expert opinion to assist the US Court reach a decision in favour of protecting Laboutin’s red shoe sole trade mark.

Laboutin unsuccessfully sought an injunction to prevent Yves St Laurent from producing red soled shoes as part of its latest collection. Despite owning a US trade mark for it’s distinctive red sole since 1998, in the recent trade mark infringement case against Yves Saint Laurent, the Judge in the New York Southern District Court held that Laboutin could not claim exclusive use of the colour red on shoes. The Judge stated that without some limitation on the use, “awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants” – which is against the Lanham Act (the US Copyright Act).

During the proceedings, Laboutin sought to designate the pantone shades of red its trade mark should apply to but the Court declined, stating that the range was even broader than the single colour registered. Yves Saint Laurent’s lawyers claimed a swift victory and argued that the US trade mark should not have been granted in the first place, so where does this leave Laboutin? Well naturally it is appealing the decision, but why is Tiffany concerned about all this and voicing its opinions to the Court?

The answer lies in a small blue box with a Pantone colour all to itself  – “Tiffany Blue” Pantone shade 1837 (the number corresponds to the year Tiffany was founded). Tiffany owns the US trade mark for this colour for it’s packaging, marketing, website, business communications jewellery and accessories, meaning it has exclusive use of this shade and can prevent others from using it. In light of the Judge’s comments about the registerability of colors in the fashion industry, Tiffany must be worried that this monopoly could be lost. In its submission to the Supreme Court, Tiffany argues that the ‘fashion industry’ should be segmented and the validity of the mark considered according to the fashion sector it is used in. This may be a semantic argument as far as the Court is concerned, but if Laboutin loses and the door is opened to challenging single colour trade marks, Tiffany may be blue for a completely different reason.

For copyright and trade marks advice contact: Joanne Frears 

November  17th 2011


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