linked in facebook twitter rss

  • Interbrand
  • Brandchannel

your chance!
your chance!
Also of interest
  Gabriela Salinas Color Trademarks: A Black Future for Red Soles?
by Gabriela Salinas
September 9, 2011

Does color matter?

Probably the last “marketing visionary” that did not recognize the importance of color for the visual identity system of a brand was Henry Ford, for whom "any customer could have a car painted any color that he wanted as long as it was black." Since then, we have come a long way in terms of acknowledging the importance of color as a tool to build brand equity. Apple´s CEO, Steve Jobs, called Google´s Vice President of Engineering in 2008, to explain that the second O of the Google logo on the iPhone did not have the right yellow gradient. This story illustrates the importance that color management has acquired nowadays.

Marketers now recognize that colors have the power not only to shape people’s emotions but also influence their purchasing behavior. A 2007 study by the University of Loyola, Maryland, found that a consistent use of color to manifest critical messages could increase brand recognition up to 80%. Other studies have shown that color is even more memorable than a shape or a name. Think of red, which brand do you think of first? If you are like most people probably your answer will be Coca-Cola. This example illustrates how the consistent use of certain colors is a highly effective way of building brand equity as this provides instant recognition and association. This kind of associations become even more important in an environment where competition is harsher and it is increasingly difficult to find a distinctive edge.

In this context, colors play a key role in achieving such differentiation. Their acceptance has also grown due to certain rulings in Europe and the US that have recognized the capacity of colors to perform as trademarks. Cadbury’s, Tiffany’s, UPS, Heinz, T-Mobile, Orange and BP have all looked to protect their colors as trademarks in different jurisdictions. But the recent negative ruling on the Louboutin´s red soles case casts a doubt on the future of color trademark protection, its legal security and the cost-benefit of investing in it.

The fight over a red “signature” sole

The Louboutin brand is associated with impossible-to-wear stilettos with red-lacquered soles. Like many successful, distinctive and catchy visual devices that conform the expression of strong brands, the red soles were only incorporated to the design of the shoe by chance. Soon after the launch of the brand back in 1991, Christian Louboutin applied red nail polish to the sole of a shoe as he believed that the shoes lacked energy. Since then, this feature has become a distinctive and recognizable element of the brand. Recognizing the value of such association and the instant recognition that it generates, Christian Louboutin went on to file a trademark application for the red-color soles in 2007 and the red of the soles was granted trademark protection in the US in 2008. The specific shade is now known as Red Chinese (Pantone No. 18-1663 TP) but it was never precisely identified as such in the trademark application form, so the protection was granted to a rather “broad and indefinite” red trademark.

Earlier this year, Louboutin, filed a trademark infringement claim against Yves Saint Laurent, who had started to use this distinctive element of the Louboutin’s visual identity for their 2011 Resort collection. Louboutin sought a court injunction against YSL’s products and claimed damages of at least $1million. But Judge Victor Marrero of the Southern District of New York ruled against Louboutin’s claim.

The ruling of Judge Marrero opens up the possibility for any other designer to make red-soled shoes. The Judge based its ruling in four main points:

  1. For fashion purposes, single colors can be protected as trademaks only when used in distinct patterns or combination of shades.
  2. The specific red color for which protection was intended was not precisely identified in the registration, i.e., it was not referenced to an objective Pantone or RAL system color, and therefore “overly broad” and likely not protectable.
  3. By comparing fashion designers to artists, the judge concludes that color performs nontrademark functions, aiming to attract, to stand out, to beautify and to be useful, not to identify and advertise a commercial source. But attracting and standing out are basic brand functions, and the legal foundation for the brand concept is the trademark concept.
  4. The ruling argues that it would be absurd allowing the protection of the use of a single color for fashion items to spiral up and extend to all kinds of fashion items. This point is directly related to the “depletion theory” that considers that color per se cannot function as a trademark, as the colors available to players within a specific category is limited and allowing colors to be protected as trademarks would lead to the color “exhaustion or depletion.”

But, can you trademark a color?

The first question is, can you trademark a color? Or like Judge Marrero’s ruling suggests, can you only trademark patterned colors for fashion?

Although it is not easy to protect single colors as trademarks, it is possible to do so. A color trademark is a non-conventional trademark, such as sounds, shapes or scents trademarks. For a color to be susceptible to be protected as a trademark, it must satisfy certain conditions in most jurisdictions:

  • The color needs to be strongly associated to the brand, i.e. it is necessary to prove that the continued and intense use of that color in time has created secondary meaning, i.e., an immediate and distinguishable association to the subject brand (at least in the category)
  • The color must be represented in an objective, precise, durable and self-contained way (eg. Using RAL or Pantone) – the only weak aspect of the Louboutin registration and further claim
  • The color must not fulfill a functional purpose or be the result of the regular manufacturing process

Why trademark a color?

The second question is, is it worthwhile the effort and resources invested in trademarking a color? It depends. There are some industries, like the mobile industry that have invested a lot of resources in registering different colors: T-Mobile, Libertel and Orange have all registered their signature shades in different countries. It is great to have that extra “layer” of protection added to your corporate shade, but only a consistent and intelligent use of your brand colors to convey key brand messages can provide enduring distinctiveness to a brand´s visual identity. At a specific point in time, and without having protected its color as a trademark, the brand that was most associated to red in the UK was Vodafone rather than Coke. That did not come through legal protection but rather a very intelligent and consistent usage of the red shade.

Black future for red soles

It could be argued that in general the non-conventional trademark protection is still to be developed and consolidated in Europe and the US. There is still to be seen the impact of controverted Marrero’s ruling in this area which will probably be negative. Beyond specific legal and technical aspects which may favour or prevent colors from being granted trademark protection, it is key to earn “emotional ownership of a color” by using it in a distinctive (ideally, unique) way that helps build brand equity. It is not easy, but some brands like Vodafone, INGDirect or Coca-Cola might signal the way forward. Using the color in a way that is consistently and recognizable associated to a particular product or service is essential to build a strong association. When you think about the costs of granting trademark registration, litigating if the rights are infringed and compare this with the potential leverage of brand equity derived from strategically deploying such resources, your cost-benefit analysis of registering a color trademark may not always be positive.

Of course, it seemed the right move for Louboutin at the time, as he had been able to develop a strong and distinctive association with the red soles. But, can you sustain all the weight of your brand equity just on a single tangible attribute like color? If so, is your red-sole lacking some soul?


   Gabriela Salinas - As Global Brand Manager at Deloitte, Gabriela advises internal and external clients on brand strategy and measurement related issues. She has a broad international experience, having worked in New York, Buenos Aires, Singapore, London and Madrid for clients such as Bank of America, Repsol YPF, Telefónica, Bausch & Lomb, Johnson & Johnson and GM and other international companies on projects that have required a broad range of strategic solutions including brand positioning, brand engagement, brand architecture and brand measurement. She also teaches brand management and brand valuation at the Institute of Intangible Assets, Pompeu Fabra University, IE Business School and ICADE University in Spain. Her books on brand valuation include“Brand Valuation: a review of approaches, providers and methodologies”, “Brand Valuation: measuring to create value” and "The International Brand Valuation Manual".

 commenting closed Add Social Bookmark bookmark  print
 suggest topic  recommend ( 12 )  email

Color Trademarks: A Black Future for Red Soles?
 Absolutely understand the difficulties of trademarking a colour in the broad sense, but I do not understand why Laboutain cannot protect the use of the colour red specifically when used on the soles of shoes? This is afterall where it is most distinctive for the brand 
Alex Ririe, Business Director, Coley Porter Bell - September 10, 2011
 Interesting article. There is a lesson here about planning to builda brand using a colour or anything else generically available. This route, although initially tempting, often leads to something that can be legitimately used by competing brands. So it will not then be distinctive. 
Thayne Forbes, Joint Managing Director, Intangible Business Limited - September 12, 2011
  brandchannel brandspeak archive   2014  |  2013  |  2012  | 2011  |  2010  |  2009  |  2008  |  2007  |  2006  |  2005  |  2004  |  2003  |  2002  |  2001
Dec 22, 2011 Pan Am Lives - Every Dead Brand's Dream -- Michael Stone
  A deeper look into Pan Am by Michael Stone
Dec 5, 2011 The Generational Effect - Customer Loyalty across the Generations -- Howard Lax
  A look into customer loyalty
Nov 18, 2011 Play: Bringing Virtual & Real Worlds Together -- Ted Mininni
  A deep look into bringing virtual and real worlds together
Nov 11, 2011 Putting a Mark on Sustainable Luxury -- Diana Verde Nieto
  How to help consumers make informed decisions about sustainable brands?
Nov 4, 2011 In a Crowded Daily Deals Market, Attention to Detail Counts -- Kara Trivunovic
  With 680+ daily deal providers now peddling everything from discounts on high fashion to high adventure travel packages, the market is reaching a tipping point. Here’s how to stand out
Oct 27, 2011 Brand Iraq and the Arab Spring -- Lisa Knight
  A deeper look into the identity of the Iraqi nation
Oct 21, 2011 The Power of 8: Eight Elements to Address When Researching Multicultural Audiences -- Favio Martinez
  Research can validate or disprove our marketing and communications assumptions. Done correctly, it can uncover the actionable audience insights that serve as the foundation for killer business solutions.
Oct 14, 2011 Start Measuring What Matters -- Brian Chiger
Oct 7, 2011 Thank You, Steve Jobs -- Melissa Davis
  A tribute on the Apple co-founder's passing, by Truebranding's Melissa Davis
Sep 30, 2011 Linkable Offers - A Redemption Revolution -- Kim Riedell
  A deeper look into online coupon companies
Sep 23, 2011 Virtual Events – Aligning Environment, Content, Audience and Technologies for Superior Branding Impact -- Michael LaRocco
  A look into Virtual Events by Michael LaRocco
Sep 16, 2011 Back to the Future – Marketing to the New Majority -- Ola Mobolade
  Ola Mobolade shares three important lessons marketers can learn from the history of multicultural media and marketing in America
Sep 2, 2011 Successes, Failures and Counterfeits: Western Brands in China -- Matt Train
  The perceptions and misperceptions of Western brands in China.
Aug 26, 2011 Leveraging Consumer Engagement to Fight Product Counterfeiting -- Greg Miller
  To fight counterfeiting, build customer engagement into the authentication solution.
Aug 19, 2011 Steps to Successful B2B Communications -- Hope Picker
  Insights on Successful B2B Brand Communications
Aug 12, 2011 London’s Grief -- Melissa Davis
  London-based Melissa Davis on why the UK is not a broken society.
Aug 5, 2011 What’s in a Name? -- Lisa Knight
  The founder of the Brand Foundation on the political implications of naming.
Jul 29, 2011 Absolut Genius -- John Bell
  John Bell on how Absolut Vodka as kept its cool.
Jul 22, 2011 Cheering On Brand Japan, the “New Cinderella” -- Eileen Wacker
  The view from Hawaii on Japan's victory in the Women's World Cup.
Jul 14, 2011 Product Placement in the UK: A Progress Report -- John Barnard
  NMG chairman John Barnard on the challenges facing product placement’s growth in the UK
Jul 8, 2011 Japanese Lessons: In Crisis, Take the Offensive -- Karen Attyah
  Crisis management lessons from Japan
Jul 1, 2011 Have Brands Lost Their Cachet? -- Ted Mininni
  A look into branding and brand value by Ted Mininni
Jun 24, 2011 Why Entrepreneurs Need Smarter Brands -- Julie Cottineau
  Why entrepreneurs need to spend mroe time and energy in defining and pressure testing their Brand Idea.
Jun 17, 2011 Why iCloud is Apple’s Achilles’ heel -- Olof Schybergson
  The iCloud service shows a drift towards software development for Apple, and less towards their shiny nice products.
Jun 14, 2011 Next Summer’s Blockbuster Coming from an App Near You? -- Michael Stone
  Beanstalk's Michael Stone on Moshi Monsters, Angry Birds and other hot properties at the 2011 Licensing International Expo
Jun 8, 2011 The Tragic Fall from Specialist to Generalist: Starbucks, the Latest Victim -- John Bell
  An in depth article about Starbucks going from specialist to generalist.
Jun 3, 2011 The Future of Customer Insights -- Amanda Yates
  A closer look into the future of customer insights
May 27, 2011 Is Bieber Fever Contagious? -- Michael Stone
  If it even necessary that Justin Bieber conquer the tween boys’ market?
May 20, 2011 10 Ways to Make the Most of Mobile Marketing -- Jeff Judge
  Signal CEO Jeff Judge on boosting the ROI of mobile marketing.
May 13, 2011 Pharma Branding and Pharma Marketing: The Keys to Success -- Dr. Gary Wield
  Dr. Gary Wield on the brave new world for pharmaceutical marketing.
May 5, 2011 How to Build Long-Lasting Relationships with Your Customers Online -- Zephrin Lasker
  Zephrin Lasker takes a look at how to build long-lasting relationships with online customers
May 3, 2011 Animation and Overseas Deals: All in a Day’s Work for LeBron James, Inc. -- Patrick Kerns
  Interbrand’s Patrick Kerns assesses the global branding strategy of LeBron James Inc.
Apr 29, 2011 Good Brands Gone Bad -- John Bell
  How brands recover from a crisis defines their essence.
Apr 15, 2011 The Anatomy of a Great Ad - Mark Bilfield
  Mark Bilfield reviews the winners in TED’s first Ads Worth Spreading competition to highlight what makes a great ad.
Apr 1, 2011 INDIA Future of Change: Engaging with the World -- Amit Shahi
  Amit Shahi, project director of INDIA Future of Change, on India’s nation branding
Mar 25, 2011 The Cure for a Forgotten Brand - Reinventing Luden’s -- Terri Goldstein
  The Luden’s brand story reflects the rise and fall of many heritage brands.
Mar 11, 2011 Bing Heats Up Search War for Brands -- Ben Kirshner
  How will Bing’s HTML5 impact how online consumers search for products?
Mar 4, 2011 Social Tribes are More Potent Than Social Networks -- Dr. Bob Deutsch
  Dr. Bob Deutsch argues that brand marketers’ fatal error is to think of customers as consumers, not people.
Feb 25, 2011 Between Culture & Branding - An African Perspective -- Tomi Ogunlesi
  Bates Cosse strategic planner Tomi Ogunlesi debunks the notion that consumers in Africa aren’t sophisticated.
Feb 18, 2011 Think Outside the (Blue) Box - The Role of Online Collaboration in Rebranding -- Peter Ryder
  How to avoid costly, and damaging, rebranding mistakes.
Feb 11, 2011 Trends for the New Decade -- Cheryl Swanson
  Toniq principal Cheryl Swanson weighs in on hot trends for 2011 and beyond.
Feb 4, 2011 The Secret to Real Customer Connectivity -- Ted Mininni
  A deeper look into customer connectivity with Ted Mininni
Jan 28, 2011 Advertising China -- Jay Wang
  USC professor Jay Wang on China’s branding campaign during president Hu Jintao’s state visit to the U.S.
Jan 21, 2011 Brand equity beyond the grave -- Gabriela Salinas
  A deeper look into marketing using dead celebrities by Gabriela Salinas.
Jan 14, 2011 Customer Loyalty Is Dead - Your Four Opportunities To Capture Customers Who No Longer Care Where They Buy -- Robert H. Bloom
Jan 7, 2011 The 1st Baby Boomer Turns 65 - and Why it Doesn’t Matter -- Stephen Reilly
  Born sometime in 1946, the first Baby Boomer will turn 65 this year. You can expect to hear this achievement announced repeatedly before 2011 is over.