Jeffri Cheong explains some recent developments in colour trade marks.
 
Some women’s handbags and shoes cost more than a car. Leading designers like Louis Vuitton, Gucci, Hermes and Prada fight for designer handbag supremacy every fashion season.
 
As for shoes, Manolo Blahnik and Ferragamo made way to Christian Louboutin (“Louboutin”) in 2011, currently one of the hottest names for women’s shoes.

Louboutin shoes have a distinctive red outsole which is recognised as a registered trade mark the UK. The specific shade of red is pantone 18.1663TP to be precise. 

In November 2011, the UK Intellectual Property Office also acknowledged the registrability of the colour purple, Pantone 2865c, by Cadbury in relation to their chocolate bars, tablets and drinks.
 
Orange, the UK telecommunications company also holds a UK registered mark for the colour orange, or pantone 151, for telecommunication services.
 
In the UK a trade mark is defined as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. All the applicant would have to show is that the mark, or colour in this case, had acquired sufficient distinctiveness.
 
Louboutin's red outsole was also registered as a trade mark in the US. In August 2011, Louboutin tested their rights against Yves Saint Laurent (“YSL”) in New York when they sued YSL for infringing their trade mark by using red outsoles on their shoes. YSL counterclaimed that the red outsole trade mark was invalid.
 
The action by Louboutin against YSL failed. The New York Court allowed YSL’s counterclaim and did not consider that the red colour was capable of protection. However the New York Judge’s decision may have been influenced by the negative impact monopolies for colours have on competition. Strictly speaking, there is nothing under the provisions of the UK and US trade mark laws which prevent the registrability of a colour. It is questionable whether the effect of competition law should have been within the Judge’s contemplation in making his decision.
 
In Malaysia, the definition of a trade mark is similar to the UK. It is simply defined as a mark proposed to be used in relation to goods or services for purposes of indicating a connection in the course of trade between those goods or services. The principal requirement is that it is a distinctive mark. The definition of distinctive is being capable of distinguishing goods or services with the proprietor of the mark used in the course of trade.
 
Given the similarity of the definition of a trade mark in Malaysia to that of the UK, it will be interesting to see whether the Registrar of Trade Marks in Malaysia will approve an application to register a colour as a trade mark where distinctiveness can be established.