Tiffany Throwing Rocks


By Ashlee Froese of Keyser Mason Ball LLP

Christian Louboutin, Yves Saint Laurent and Tiffany, oh my!  This well-dressed litigation is becoming increasingly more complex. (CanadaFashionLaw has been following this case extensively - click here for a full rundown).

In lending a well-jeweled hand to Christian Louboutin in the fight to assert his trade-mark rights to red-bottomed soled shoes, Tiffany throws its iced-out rocks against the most recent decision denying Christian Louboutin injunctive relief against Yves Saint Laurent.  CanadaFashionLaw was happy to get its hands on a copy of Tiffany's Amicus Brief.

Although seemingly unrelated (jewelry v. shoes), Tiffany and Christian Louboutin are united in their stand that trade-marks can be comprised of one color (robin's egg blue and red lacquer).

Why is Tiffany getting involved in Christian Louboutin v. Yves Saint Laurent case? 

It's a luxury house of cards. 

In the recent decision rejecting Christian Louboutin's request for a preliminary injunction, the judge called into question the registrability of Christian Louboutin's trade-mark (red soled shoes) on the basis that a single color cannot act as a trade-mark in the fashion industry.  Relying on the robin's egg blue as a distinctive part of its branding, Tiffany's trade-mark could also be susceptible to attack under the same line of reasoning.  Tiffany did not hold back:

"Tiffany files this amicus curiae brief because the District Court's opinion in this case adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any fashion item, even where the color has achieved 'secondary meaning' and is associated with a single brand.  Amicus curiae respectfully submit that adoption of such a blanket rule was unnecessary to a resolution of the preliminary injunction motion below and should be rejected by this Court."

Here's a summary of Tiffany's position:

a) Ownership of a trade-mark registration is prima facie evidence of the validity of the trade-mark.  If that trade-mark registration is to be invalidated, the onus is on the defendant (in this case Yves Saint Laurent) - not on the plaintiff (Christian Louboutin) to prove its validity.

b) It is established in trade-marks law that a single color can function as a trade-mark, especially when it has acquired secondary meaning.  In the decision, the judge repeatedly acknowledged how infamous Christian Louboutin's red bottomed soles have become.  Ultimately, the judge made a sweeping exception for the fashion industry.

c) Rather than making sweeping generalizations about whether established trade-mark law principles apply to the fashion industry as a whole, the judge should have examined the issue at hand:

"The proper inquiry is whether the particular mark at issues has been registered with the (US Patent and Trademarks Office) and whether the particular mark has secondary meaning"

d) US trade-mark legislation does not carve out trade-mark principles as applicable to some industries and not applicable to others.  Any such sweeping generalizations are contrary to fundamental principles of trade-marks law.

e) The judge called into question whether Christian Louboutin's was a valid registration on account of color being a function of fashion and therefore incapable of being a trade-mark.  Tiffany called into question this rationale:

"A design feature of a particular product is essential to the use or purpose of the product only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough'.

A shoe is a shoe, regardless of the color of its bottom sole.  There is no function to a red bottomed shoe.

f) Tiffany then called into question the judge's reasoning that the red bottomed sole increased production costs, thereby justifying an inflated retail price, which is indicative of the functionality of the trade-mark.  Tiffany argued that this rationale is topsy-turvy.  If the trade-mark decreases the production cost, thereby increasing the profit margin, then there is functionality. 

Stay tuned to CanadaFashionLaw as this case unfolds!

View more from Canada Fashion Law and @BrandFashionLaw

(C) Ashlee Froese, 2011. All rights reserved.

The contents herein are for informational purposes and do not constitute legal advice. It is strongly recommended that you seek a professional legal opinion in the event of a legal dispute.

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