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From purple candy bar wrappers to red sole shoes: the increasing commercial significance of colour marks

Most trademarks consist of words and/or design elements, but recent decisions demonstrate the increasing importance of colour by itself functioning as a trademark when applied to a product.  Courts have upheld trademark registrations owned by candy manufacturer Cadbury UK Limited (“Cadbury”) and fashion design house Christian Louboutin S.A. (“Louboutin”) for particular colours as applied to chocolate bars and high-heeled shoes, respectfully.2012 Nov 30 AMF-SAM_From purple candy bar wrappers-red sole shoes-colour marks

In 2004, Cadbury applied to register the colour royal purple as a trademark in the UK in association with chocolate products (Application No. 2,376,879).  Société des Produits Nestlé (“Nestlé”)’s opposition to the application was ultimately rejected by the register, and Cadbury’s application was allowed. Nestlé appealed.

On October 1, 2012, the High Court of England and Wales confirmed that royal purple was sufficiently regarded by the public as associated with Cadbury to merit registering the colour mark. The Court recognized that Cadbury’s trademark registration was for a limited class of goods (various milk chocolate products) and protection was limited to a particular shade of purple (Pantone 2685c) “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” (Société des Produits Nestlé SA v. Cadbury UK Limited, [2012] EWHC 2637 (Ch)).

Earlier this year, a US Court of Appeals held that Louboutin had a valid trademark registration for its lacquered red outsoles (Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 2d Cir, Case No. 11-3303-cv).  In 2008, Louboutin obtained US trademark registration serial No. 3,361,597 for the colour red applied to the outsole of women’s footwear.  Louboutin’s registration states: “The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red sole on footwear.”  The written description is accompanied by a diagram indicating the placement of the colour.

In 2011, Yves Saint Laurent (“YSL”) began selling a monochromatic red women’s shoe, featuring a red outsole that matched the colour of the upper portion of the shoe.  Louboutin sued YSL for infringement of its trademark and requested, among other things, an injunction prohibiting YSL from selling its monochromatic red shoe.

Louboutin’s injunction was initially refused by a District Court on the basis that, in the fashion industry, single colour marks are inherently “functional” and, accordingly, any such trademark would likely be held to be invalid.

On appeal, the Court of Appeals reversed the lower court’s finding in part, concluding that a single colour can be registered as a trademark so long as the public associates a “secondary meaning” with that colour.  “Secondary meaning” is the public’s ability to associate a product feature with the source of the product rather than the product itself. Whether a colour has acquired secondary meaning is an inherently factual inquiry based on factors such as advertising expenditures, consumer studies linking the mark to a source, unsolicited media coverage of the product, sales success, attempts to plagiarize the mark, and length and exclusivity of the mark’s use.

Ultimately, the Court of Appeals upheld Louboutin’s trademark registration, finding that the red sole on footwear had acquired distinctiveness.  However, the Court concluded that the rights conferred by the trademark registration were limited to only those situations in which the red lacquered outsole contrasts in colour with the rest of the shoe.  It was held that YSL had the right to sell its monochromatic red shoe because it was neither a use of, nor confusingly similar to, Louboutin’s contrasting red outsole mark.

In Canada, it is possible to register colour trademarks consisting of a colour applied to a product of a particular shape and size where that colour has acquired distinctiveness through use in Canada so as to distinguish the source of the product. However, Canadian courts have considered colour trademarks to be inherently weak marks and the onus is on the registrant to show that its colour mark has acquired distinctiveness and is regarded in the mind of the average consumer as indicating a particular source.

It is because of a failure to satisfy this distinctiveness requirement that, following a challenge by several generic drug companies, the Federal Court expunged trademark registration No. TMA687,313 owned by Glaxo Group Limited (“Glaxo”) covering two tones of purple applied to a pharmaceutical inhaler (Apotex Inc. v. Canada (Registrar of Trade-marks), 2010 FC 291).  The Federal Court held that, in order to be distinctive, the consumers for the inhaler (physicians, pharmacists, and patients) must relate the trademark to a single source, and thereby use the mark to make their prescribing, dispensing, and purchasing decisions.  The Court noted that while colour and shape may have served to assist patients in identifying what was inside the inhaler, Glaxo’s evidence was insufficient to establish that the colour also served as an indicator of the source of the inhaler.  The Federal Court’s decision to strike Glaxo’s registration from the trademark register was upheld on appeal to the Federal Court of Appeal (Glaxo Group Limited v. Apotex Inc., 2010 FCA 110).

The Glaxo case serves as a reminder of the challenges in adducing evidence sufficient to support the use and distinctiveness of trademarks, specifically colour marks.  The use of a colour applied to a product of a particular shape and size is capable of registration on the trademark register only where the colour has acquired secondary meaning to indicate the source of the goods.

by Amy Fong and Stephanie Melnychuk


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