Authored By: Nadia Medina Perez
SOAS University of London
Abstract
Colour is among the most powerful and commercially significant tools of luxury brand identity. From the iconic Hermès orange – to Christian Louboutin’s lacquered red sole, chromatic distinctiveness underpins millions — and in some cases billions — of pounds of brand equity in the global luxury fashion industry. This article argues that while significant doctrinal progress has been made, current legal frameworks remain inadequate. Yet, the legal protection afforded to colour marks remains deeply contested, inconsistently applied, and jurisdictionally fragmented across the United Kingdom, the European Union, and the United States. This article examines the central legal question of whether existing trademark frameworks in these three jurisdictions adequately protect colour marks in the luxury fashion sector, drawing on doctrinal and comparative research methodology and engaging with leading authorities. This article argues that while significant doctrinal distinctiveness has been made, current legal frameworks remain inadequate due to divergent distinctiveness thresholds, inconsistent treatment of colour depletion, and the absence of harmonised international standards; with recommendations for legislative and judicial reform proposed.
Introduction
Few assets in the luxury fashion industry are as commercially potent — or as legally precarious — as colour. The Hermès orange has become one of the most recognisable signals of luxury globally, identifying the brand without recourse to any word, logo, or device. Christian Louboutin’s red lacquered sole has similarly transcended aesthetic choice to become synonymous with exclusivity and craftsmanship. Yet, despite their enormous commercial value, colour marks occupy a uniquely vulnerable position in trademark law: they are simultaneously the most immediately recognisable brand signals and the most legally difficult to protect.
The core legal challenge is structural. Trademark systems across major jurisdictions have historically been reluctant to grant monopoly rights over single colours, primarily due to concerns about the depletion of a finite public resource and the potential restriction of competition. A word or logo may be highly distinctive without impoverishing the linguistic or visual commons available to competitors; a colour, by contrast, exists on a spectrum of finite perceptual possibilities. At the same time, the luxury fashion sector depends critically on colour as a primary signifier of brand identity, provenance, and quality — a commercial reality that trademark law can no longer afford to ignore.
This article addresses the following research question: are the trademark frameworks of the United Kingdom, the European Union, and the United States adequate to protect colour marks in the luxury fashion industry, and if not, what reforms are necessary?
Background and Conceptual Framework
Trademark law serves the dual purpose of protecting the goodwill of brand owners and ensuring that consumers can reliably identify the source of goods in the marketplace. In the United Kingdom, the Trade Marks Act 1994 defines a trademark as “any sign capable of being represented in the register in a manner which enables the registrar and other persons to determine the clear and precise subject matter of the protection afforded to its proprietor.”[1] Critically, the Act provides that marks shall not be registered where they are “devoid of any distinctive character”[2], a threshold that has proven particularly contentious in the context of colour marks.
The theoretical difficulty with coloured trademarks lies in the tension between two competing values: the protection of investment in brand identity, and the preservation of a competitive marketplace in which all traders retain access to a sufficient palette of chromatic expression. The Court of Justice of the European Union articulated this tension clearly in Libertel Groep BV v Benelux-Merkenbureau[3], noting that colour marks can only be registered where they have acquired distinctive character through use, and that the registration of a single colour creates a risk of exhausting the available supply of colours for competing undertakings in the same sector.
In the United States, the Supreme Court confirmed in Qualitex Co v Jacobson Products Co that colour alone can function as a trademark, if it has “acquired distinctiveness” — that is, where the public associates the colour with the source of the product.[4] The Lanham act, which governs trademark registration in the US, similarly requires that a trademark possess distinctiveness, whether inherent or acquired, before it may be registered.[5]
Against this legal background, colour marks in the luxury fashion sector present a particularly compelling case study. The use of specific colours by luxury brands — Hermès orange (Pantone 1672), Louboutin red, Tiffany blue, and Burberry beige — represents years of consistent commercial investment in chromatic brand identity. The legal question is whether these investments attract consistent and workable protection across these three frameworks in the three different jurisdictions.
Hermès International has not registered its distinctive orange as a standalone colour trademark in most jurisdictions — not because it lacks commercial recognition, but because the practical and legal obstacles to securing colour mark protection remain formidable. The Hermès example thus illustrates the gap between the commercial reality of colour-based brand identity and the legal framework’s capacity to protect it.
III. Legal Analysis
United Kingdom
Under the Trade Marks Act 1994, and the Intellectual Property (Enterprise) Act 2014, UK trademark law gives effect to the broader EU harmonisation framework that applied prior to Brexit. The principal hurdle for colour trademark registration is the distinctiveness requirement under section 3(1)(b)[6], which precludes registration of marks that are devoid of any distinctive character.
The requirement of acquired distinctiveness in the UK — as confirmed in Société des Produits Nestlé v Cadbury[7] — demands that the mark alone, as opposed to any other mark which may also be present, identifies the product as originating from a particular undertaking. This is an onerous standard, particularly for luxury brands that typically present their colour in combination with other identifying elements such as logos, packaging, and labelling. The Court of Appeal’s requirement that the colour mark must independently — not merely as part of a combination —function as a source identifier creates a significant practical barrier.[8]
For Hermès, the consequences of this standard are particularly stark. The Hermès orange is almost invariably encountered as part of a broader brand presentation: the orange box, the orange bag, the orange ribbon. Whether the orange alone — stripped from its packaging context —would satisfy UK courts that it independently identifies Hermès as the source is, at present moment, an open and unresolved question. The lack of registration means that the brand must rely on passing off actions, which require proof of goodwill, misrepresentation, and damage, rather than the more straightforward infringement remedy available to the registered trademark owners.[9]
European Union
EU trademark law, governed by the European Union Trade Mark Regulation (EUTMR), applies a broadly similar distinctiveness requirement, though the CJEU’s jurisprudence has introduced important nuances. Under Article 7(1)(b) of the EUTMR, marks devoid of distinctive character are excluded from registration.[10] However, Article 7(3) provides that this exclusion shall not apply where the mark has, before the date of application, acquired a distinctive character as a result of the use made of it.[11]
The CJEU’s judgment in Christian Louboutin v Van Maaren[12] represents the most significant EU-level development in colour trademark law in the luxury fashion sector. The Court was asked whether a colour applied to the sole of a shoe constitutes a “shape” within the meaning of article 7(1)(iii) EUTMR, which precludes registration of marks that consist exclusively of a shape which gives substantial value to the goods. The Court held that, where the colour mark consists of a colour applied to a specific part of a product, it is not a “shape” for the purposes of that provision,[13] provided that the shape is not an essential element of the colour applied.[14] The Court confirmed that the red sole trademark, could in principle, be protected under EU law, subject to proof of acquired distinctiveness.[15]
The decision removes one potential basis for invalidity — the ‘shape gives substantial value’ exclusion — that competitors had sought to deploy against colour marks on specific product components. Nevertheless, the acquired distinctiveness requirement remains, and the CJEU’s standard still demands substantial evidence of consumer recognition specific to colour as a source identifier.
United States
The US framework presents a more permissive approach than either the UK or the EU in certain respects, though it introduces its own complications. Following Qualitex, it is settled law in the United States that colour alone can serve as a trademark and is protectable under the Lanham Act, provided it has acquired distinctiveness (secondary meaning) and is not functional.[16] Justice Breyer’s formulation — that colour “can sometimes help distinguish a firm’s goods or services from those of competitors” and thereby serve as trademarks[17] — represented a decisive departure from the prior rule in many circuits that colour marks were categorically unprotectable.
The functionality doctrine presents the principal limitation on colour trademark protection in the US. A colour cannot be trademarked if it is “functional” — that is, if its use is essential to the use or purpose of the article, or if exclusive appropriation would put competitors at a significant non-reputational disadvantage.[18] In the context of luxury fashion, functionality is rarely an issue: a brand’s distinctive colour is aesthetic rather than utilitarian in nature. However, the depletion concern continues to exert judicial influence, particularly in industries where the available chromatic palette is limited.
In the Louboutin v Yves Saint Laurent litigation in the US, the Second Circuit Court of Appeals held that Louboutin’s red sole mark had acquired a secondary meaning as a symbol of the Louboutin brand, but only when the outsole contrasted with the upper of the shoe.[19] Where the upper and outsole were the same red colour — as in the YSL monochromatic shoe at issue — no infringement was established.[20] The court’s “contrast” limitation on Louboutin’s trademark is a direct application of the concern that broad colour protection risks impoverishing the market for competitors, and represents a characteristically US approach of narrowing the scope of colour mark protection to protect competition.[21]
Case Law Discussion
Christian Louboutin SAS v Yves Saint Laurent America Holding Inc, 696 F 3d 206 (2d Cir 2012)
Christian Louboutin, the luxury footwear designer, owns a registered US trademark for a lacquered red outsole on footwear. When Yves Saint Laurent released a monochromatic red shoe — with a red upper and red sole — Louboutin brought an infringement action. The district court denied a preliminary injunction, finding that Louboutin’s single-colour trademark was likely invalid. The Second Circuit reversed in part, holding that Louboutin’s red sole had acquired secondary meaning and constituted a valid trademark, but subject to the important qualification that protection extended only to the red outsole as used in contrast to the shoe’s upper.[22]
The legal principle established by the Second Circuit is twofold. First, colour alone can serve as a valid trademark in the fashion industry, provided it has acquired secondary meaning through use. Second, the scope of that trademark must be calibrated to prevent the monopolisation of a colour across an entire product category. The “contrast” qualifier introduced by the courts reflects the underlying concern that unmodified colour protection would improperly restrict competition by effectively granting a designer a monopoly over colour that other luxury shoemakers might legitimately wish to use. The relevance of this case to the luxury fashion sector broadly — and to brands like Hermès considering colour mark registration — lies in its illustration that even strong acquired distinctiveness will not necessarily yield broad protection; courts will impose scope limitations to preserve market access for competitors.[23]
Christian Louboutin SAS v Van Maaren and Van Baar (Case C-163/16) [2018]
In parallel EU proceedings, the CJEU was asked to interpret the scope of article 7(1)(e)(iii) EUTMR in the context of Louboutin’s red sole trademark. A Dutch court had referred the question of whether the colour mark applied to a specific part of a product could constitute a “shape” for the purposes of the absolute grounds of refusal.[24] The Advocate General’s Opinion had suggested a broad reading of “shape” that would have endangered colour marks applied to species product components across the luxury sector.
The CJEU rejected this approach and held that the concept of “shape” in article 7(1)(e)(iii) does not extend to a colour mark consisting of a colour applied to a specific part of a product, where the shape is not the subject of the registration.[25] The Court reasoned that extending the shape prohibition to colour marks would undermine the ability of luxury brands to protect chromatic distinctiveness and would exceed the ordinary meaning of the statutory text.[26] The significance of this decision for luxury fashion brands, including Hermès, is that the most technically awkward basis for invalidity — the “substantial value” exception — has been authoritatively confined. Brands whose colour marks are applied to specific product elements may now more confidently pursue registration without the risk that the “shape” exclusion will be deployed to defeat the applications.[27]
Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358
Although arising outside the fashion sector — concerning the registrability of Cadbury’s purple colour in the chocolate market — the Court of Appeal’s judgment in Nestlé v Cadbury[28] is directly authoritative for colour trademark applications in the UK, including in luxury fashion. The Court held that a colour mark applied across the entire visible surface of a product could in principle be registered, but only where the applicant could demonstrate that the colour alone — and not any other feature of the product — identified the source to the average consumer.[29]
The significance for luxury fashion is the stringency of the independent requirement. Kitchin LJ’s analysis, which drew on the CJEU’s preliminary ruling in Nestlé v Cadbury[30] at EU level, makes clear that where a colour is presented consistently alongside other brand indicators — a name, logo, or packaging design — the applicant faces the burden of demonstrating that consumers have come to regard the colour itself, in isolation, as a source identifier. For brands like Hermès, whose orange is almost invariably presented as part of a holistic brand experience, this requirement creates a formidable evidential challenge. The case thus highlights the most significant doctrinal gap between commercial reality and legal protection in the UK context.[31]
Critical Analysis and Findings
Three principal deficiencies emerge from the foregoing analysis. First, the divergence between jurisdictions in the application of the acquired distinctiveness standard creates regulatory fragmentation that is commercially damaging for luxury brands operating globally. The US “contrast” qualification introduced in Louboutin v YSL, the UK’s “independence” requirement from Nestlé v Cadbury, and the EU’s narrow “shape” exclusion from Louboutin v Van Maaren represent three materially different legal approaches to the same underlying question. A luxury brand seeking global protection must navigate these divergent standards simultaneously, facing serious risk of patchwork protection or outright failure in one or more jurisdictions.[32]
Second, the absence of a clear and workable framework for assessing acquired distinctiveness in the luxury sector is a significant lacuna. Luxury brands such as Hermès are commercially distinctive precisely because the customers are a narrow, highly sophisticated demographic segment; the broader “average consumer” standard applied by courts may systematically understate the degree to which relevant consumers associate a colour with a single source.[33] A sector-sensitive approach — one that calibrates the relevant consumer and the relevant market when assessing acquired distinctiveness — would more accurately reflect the commercial reality of luxury brand recognition without improperly monopolising colours in mass-market contexts.
Third, the international framework offers insufficient harmonisation. The TRIPS Agreement requires that trademarks be capable of distinguishing goods or services,[34] but says nothing about colour marks; the Paris Convention’s telle-quelle provisions afford limited additional protection. WIPO has not developed specific guidance on colour mark standards. This leaves luxury brands exposed to the risk that investments in colour-based brand identity will be protected in some markets but not others, with no international mechanism to resolve the divergence.
The Hermès orange illustrates these deficiencies most clearly. In commercial use since the 1940s and universally recognised in every major luxury market, Hermès has nonetheless not secured registered colour trademark protection in the UK or EU, leaving it dependent on passing-off actions of limited scope. The current legal framework’s failure to provide a clear, accessible registration pathway for a colour of this commercial significance represents a significant policy failure that warrants legislative attention.
Conclusion
This article has demonstrated that existing trademark frameworks in the United Kingdom, the European Union, and the United States are inadequate to provide consistent, accessible, and commercially meaningful protection for colour marks in the luxury fashion industry. The leading cases — Qualitex, Louboutin v YSL, Louboutin v Van Maaren, and Nestlé v Cadbury —collectively establish that colour protection is available in principle but restricted in practice by divergent distinctiveness standards, scope limitations, and the ongoing spectre of the colour depletion concern. The Hermès orange, perhaps the most commercially recognisable unregistered colour in the luxury market, exemplifies the gap between the commercial reality of colour-based brand identity and the law’s capacity to protect it.
Three reforms are proposed. First, the UK Intellectual Property Office and the EUIPO should adopt sector-specific guidance for colour mark applications in the luxury sector, calibrating the acquired distinctiveness assessment to the sophisticated consumer base and narrow market relevant to luxury goods. Second, the UK and the EU should harmonise their approach to the independence requirement following Brexit divergence, to ensure that a colour mark that satisfies EU standards is not defeated by a more stringent UK test. Thirdly, WIPO should develop a dedicated international instrument on colour trademark standards, building on the TRIPS and Paris Convention frameworks, to reduce the regulatory fragmentation that currently undermines the global protection of luxury brand identity.
The law of colour trademarks in luxury fashion stands at a crossroads. Without reform, the commercial investments of brands such as Hermès in chromatic identity will remain inadequately protected, market confusion will persist, and the deterrent effect of trademark law against copyists and counterfeiters will be materially weakened. The runway is clear; it remains for legislators and international bodies to take the first step.
Bibliography
Primary Sources
Legislation
Trade Marks Act 1994 (UK)
Intellectual Property (Enterprise) Act 2014 (UK)
Council Regulation (EC) 207/2009 of 26 February 2009 on the European Union Trade Mark (codified version) [2009] OJ L78/1
Lanham Act 1946, 15 USC §§ 1051–1141
Cases
Christian Louboutin SAS v Van Maaren and Van Baar (Case C-163/16) EU:C:2018:423, [2018] Bus LR 1583 (CJEU)
Christian Louboutin SAS v Yves Saint Laurent America Holding Inc 696 F 3d 206 (2d Cir 2012)
Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01) [2003] ECR I-3793 (CJEU)
Qualitex Co v Jacobson Products Co 514 US 159 (1995)
Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] 1 All ER 1079
Société des Produits Nestlé SA v Cadbury UK Ltd (Case C-215/14) EU:C:2015:604, [2016] Bus LR 498 (CJEU)
Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, [2017] Bus LR 1787
Secondary Sources
Journal Articles
Brewer MK, ‘Fashion Law: More than Wigs, Gowns, and Intellectual Property’ (2017) 54 San Diego L Rev 739
Fernández W, ‘The Hermès Orange: Trade Dress and Colour Marks in the Luxury Sector’ (2021) 16 JIPLP 341
Sreepada S, ‘The New Black: Trademark Protection for Color Marks in the Fashion Industry’ (2009) 19 Fordham Intell Prop Media & Ent LJ 1131
[1] Trade Marks Act 1994 (UK) s 1(1).
[2] Ibid s 3(1)(b).
[3] Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01) [2003] ECR I-3793 (CJEU) [65]–[67].
[4] Qualitex Co v Jacobson Products Co 514 US 159 (1995) 163.
[5] Lanham Act 1946, 15 USC § 1052.
[6] Trade Marks Act 1994 (UK) s 3(1)(b).
[7] Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, [2017] Bus LR 1787.
[8] Société des Produits Nestlé (n 8) [58]–[62] (Kitchin LJ).
[9] Fernández (n 6) 344–346.
[10] Council Regulation (EC) 207/2009 of 26 February 2009 on the European Union Trade Mark (codified version) [2009] OJ L78/1, art 7(1)(b).
[11] Council Regulation (EC) 207/2009 (n 11) art 7(3).
[12] Christian Louboutin SAS v Van Maaren and Van Baar (Case C-163/16) EU:C:2018:423, [2018] Bus LR 1583 (CJEU) [36].
[13] Louboutin v Van Maaren (n 13) [35].
[14] Ibid [36]–[38].
[15] ibid [39].
[16] Qualitex (n 4) 162–163.
[17] Ibid 163 (Justice Breyer).
[18] Qualitex (n 4) 173–174.
[19] Christian Louboutin SAS v Yves Saint Laurent America Holding Inc 696 F 3d 206 (2d Cir 2012) 228.
[20] Ibid 226–228.
[21] Ibid 228.
[22] Louboutin v Yves Saint Laurent (n 20) 228.
[23] Louboutin v Yves Saint Laurent (n 20) 226.
[24] Fernández (n 6) 343.
[25] Fernández (n 6) 344–346.
[26] Christian Louboutin SAS v Van Maaren and Van Baar (Case C-163/16) [2018]
[27] Brewer MK, ‘Fashion Law: More than Wigs, Gowns, and Intellectual Property’ (2017) 54 San Diego L Rev 739.
[28]Société des Produits Nestlé (n 8) [57].
[29] Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] 1 All ER 1079 [32]–[34] (Lewison LJ).
[30] Société des Produits Nestlé SA v Cadbury UK Ltd (Case C-215/14) EU:C:2015:604, [2016] Bus LR 498 (CJEU) [46].
[31] Société des Produits Nestlé (n 8) [58]–[62] (Kitchin LJ).
[32] Fernández (n 6) 349.
[33] Brewer (n 28) 753.
[34] Sreepada S, ‘The New Black: Trademark Protection for Color Marks in the Fashion Industry’ (2009) 19 Fordham Intell Prop Media & Ent LJ 1131, 1155–1158.
