Colour inevitably plays a central role in fashion—and public attitudes about fashion—from Coco Chanel’s iconic little black dress to Meryl Streep’s unforgettable cerulean sweater monologue in The Devil Wears Prada to the collective journalistic obsession with the shade known as “millennial pink” in more recent years.

The Pantone Company, known for its proprietary colour-matching system, even releases a “Fashion Color Trend Report” coinciding with New York Fashion Week as a guide to forthcoming colour trends in fashion.

Colour is also a profoundly powerful marketing tool, with companies like Tiffany & Co and Cadbury jealously guarding single colours associated with their brands. But when and to what extent should colours be protected by law as trade marks? While consumers may well come to recognise certain colours or colour combinations as identifying the source of products, there is a strong interest in keeping colours available for use by competitors, particularly in the fashion industry, where aesthetics, trends, or the need to communicate a certain message may demand a particular palette.

The eye-catching red sole of a Christian Louboutin stiletto cuts right to the heart of this conflict between genuine widespread brand recognition on one side and the need to maintain free competition and protect creative expression on the other. Unsurprisingly, Louboutin’s registered trade marks in the contrasting red sole have been litigated in numerous jurisdictions, with divergent results.

In 2018, the CJEU gave a judgment in favour of Christian Louboutin on a request for a preliminary ruling on the question of whether its mark of a red sole shown on the contour of a shoe constituted a three-dimensional shape mark. The CJEU ruled that mark did not consist “exclusively of a shape” and so was not subject to the additional restrictions on registration.

While this was hailed as a victory for Louboutin, the judgment interpreted an earlier provision of the Trade Marks Directive that applied only to shapes. The amended Article 4(1)(e)(iIi) in Directive 2015/2436, however, applies to “the shape, or another characteristic, which gives substantial value to the goods”. The CJEU has since clarified that the amended article does not have retroactive effect on previously-registered marks. But it is unclear how this will affect future colour-mark registrations; there could easily be challenges based on the argument that a colour or combination of colours can give substantial value to goods by virtue of aesthetic merit.

Anyone thinking about protecting a colour mark in the EU must also take note of the CJEU’s recent judgment in Red Bull (C‑124/18), where it rejected Red Bull’s request to set aside the General Court’s judgment relating to invalidity proceedings for its silver-and-blue combination colour mark (below). The General Court had confirmed that the mark and description was insufficiently precise and durable to meet the requirements of graphic representation—Heidelberger Bauchemie, (C‑49/02) having established that a “combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way” in order to meet the requirement of graphic representation.

Not unlike Louboutin, the court in Red Bull was interpreting a provision from an earlier version of the EU Trade Mark Regulation under the shadow of recent changes to the law; under Section (1)(4)(b) of  Regulation 2017/1001, the requirement of graphic representation has been removed, instead requiring marks to be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. While this might appear at first glance to be a relaxation of the requirement of graphic representation, the General Court in Red Bull asserted that the new wording is, in fact, more restrictive because itexpressly incorporates into the body of that provision the objectives identified in” the cases of Heidelberger and Sieckmann.

Just like fashion, trade mark law has its trends. With the changes to European trade mark law, and the CJEU’s approach in Red Bull,  it is looks like the latest trend in Europe is towards making it more difficult to protect colours as trade marks.

By Dr Barbara Lauriat, Senior Lecturer, The Dickson Poon School of Law, King’s College London.