Aesthetic Functionality

Back in Vogue

Dr David Tan

Tuesday 24 Sep 2013

Hong Kong

Clash of the Fashion Titans

Yves Saint Laurent

Cruise 2011 Collection

Colour as Trade Mark

Pantone 1837 Pantone 2685C Pantone 1448

Introduction – Trade Mark

Trademark: What/who does it protect?

The trader

Allows the identification of a particular manufacturer or seller’s

products and distinguish them from the products of another –

protects goodwill/reputation

Implications > protection of brand values and investment efforts

The consumer

Trademarks make it easier for consumers to quickly identify the

source of a given good

Implications > requirement of “likelihood of confusion” for

infringement

Trade Mark Registration

What is registrable? Lanham Act 15 USC § 1127

Any sign capable of being represented graphically which is capable of

distinguishing goods or services of one undertaking from those of other

undertakings

must be “distinctive”

must have a direct reference to source, character and quality of goods

must not have become customary in the current language or in the bona fide and

established practices of the trade

Descriptive terms are ordinarily not protectable as trademarks. They may

be protected, however, if they have acquired a secondary meaning for

the consuming public. The concept of secondary meaning recognises that

words which have a primary meaning of their own, such as bug, may by

long use in connection with a particular product, come to be known by the

public as specifically designating that product.

Registering a

Single Colour Mark

Challenges

Must be distinctive

Inherent distinctiveness or acquired distinctiveness (acquired

“secondary meaning” in the public’s mind)

Must not be functional

15 USC § 1052(e)(5): ‘No trademark by which the goods of the

applicant may be distinguished from the goods of others shall be

refused registration on the principal register on account of its nature

unless it . . . consists of a mark which . . . comprises any matter that, as

a whole, is functional’

Doctrine of utilitarian and aesthetic functionality

Christian Louboutin’s Mark

FOR: WOMEN'S HIGH FASHION DESIGNER FOOTWEAR, IN CLASS 25

(U.S. CLS. 22 AND 39).

FIRST USE 0–0–1992; IN COMMERCE 0–0–1992.

THE COLOR(S) RED IS/ARE CLAIMED AS A FEATURE OF THE MARK.

THE MARK CONSISTS OF A LACQUERED RED SOLE ON FOOTWEAR.

THE DOTTED LINES ARE NOT PART OF THE MARK BUT ARE INTENDED

ONLY TO SHOW PLACEMENT OF THE MARK

USPTO: 1 Jan 2008

“Distinctive”

A single colour mark in the specific context of the fashion

industry can acquire secondary meaning ‘if it is used so

consistently and prominently by a particular designer that it

becomes a symbol, “the primary significance” of which is

“to identify the source of the product rather than the

product itself.”’

The preponderance of evidence ‘contains sufficient undisputed

facts’ to indicate that Louboutin’s vivid lacquered red outsole

as applied to a woman’s high-heeled shoe with an upper of

a different colour is used ‘in [a] context [that] seems

unusual’ and ‘has come to identify and distinguish’ the

Louboutin brand.

“Distinctive”

“Distinctive”

2nd Circuit: the Louboutin Mark has acquired secondary

meaning — and thus the requisite ‘distinctness’ to merit

protection — when used as a red outsole contrasting

with the remainder of the shoe.

The Louboutin Mark merits protection only as modified,

and because YSL’s use of a red outsole on monochromatic

red shoes does not infringe on the Mark as modified, we

need not, and do not, reach the issues of customer

confusion and functionality at the second stage of the

trademark infringement analysis.

“Distinctive”

The modified mark would encompass all styles of women’s

‘high fashion designer footwear in Class 25’, not just the

high-heeled model illustrated in the PTO registration,

including flats, wedges, platforms, espadrilles, sandals,

sneakers and boots, where the ‘pop’ that distinguishes its

creator and has acquired the crucial secondary meaning is

not immediately visible.

2nd Cir: “When Hollywood starlets cross red carpets and high

fashion models strut down runways, and heads turn and eyes

drop to the celebrities’ feet, lacquered red outsoles on high-

heeled, black shoes flaunt a glamorous statement that pops out

at once.”

“Distinctive”

Acquired distinctiveness for all women’s shoes?

“Functionality”

A product feature cannot be trademarked if it is ‘functional’.

Parties accused of trademark infringement can claim that

the allegedly infringed feature is functional; in this way, the

functionality doctrine acts as an affirmative defence.

In Inwood Laboratories v Ives Laboratories (1982), the

Supreme Court defined a feature as functional if ‘it is

essential to the use or purpose of the article or if it

affects the cost or quality of the article’ > improves

operational efficiency of the product

“Utilitarian Functionality”

shape of Nabisco’s shredded wheat

permitted the biscuit to be produced at a lower

cost than if another shape was used

spring devices on signs by Marketing Devices

were a functional feature;

presumption based on expiry of patent

“Aesthetic Functionality”

When is colour as an aesthetic feature essential to the use

or purpose of the article?

When does the colour/aesthetic feature affect the cost or

quality of the article?

colour of John Deere tractors black outboard motor Famolare shoes JDI emblem

“Aesthetic Functionality”

The functionality doctrine serves to maintain robust

competition, and to prevent mark owners from using

trademark as a kind of back door to perpetual patent-like

protection for attractive but non-novel product features.

But … there is arguably no coherent way to separate

‘aesthetics’ from ‘utility’.

2nd Cir merged the test for ‘utilitarian functionality’ as

articulated by the Supreme Court in Inwood (1982) with the

standard established by the Supreme Court for assessing

‘aesthetic functionality’ in Qualitex (1995) and TrafFix

Device (2001)

“Aesthetic Functionality”

The 2nd Cir test for functionality:

(1) Is the design feature ‘essential to the use or purpose’;

[UF] or

(2) Does the design feature ‘affect the cost or quality’ of

the product [UF]; or

(3) If the design feature is not ‘functional’ from a

traditional perspective, it must still be shown not to have

a significant effect on competition in order to receive

trademark protection [AF] >> put competitors at a significant

non-reputational disadvantage (competitive necessity) e.g. by

limiting the range of adequate alternative designs

“Aesthetic Functionality”

the touchstone ultimately is whether the protection

of the mark “significantly undermines competitors’

ability to compete in the relevant market”

Criticisms of

Aesthetic Functionality

Reduces incentive to create aesthetically pleasing designs

Although granting a monopoly over a basic element of

design (e.g. shape, colour, texture) arguably impoverishes

other designers’ palettes, the depletion theory still needs to

be tested

Too subjective – Courts can better tackle downstream issue

of TM infringement/defences rather than upstream issue of

denying registration of TM on AF grounds

Criticisms of

Aesthetic Functionality

Courts often get it wrong – team logos and cartoon

characters are not “aesthetically functional” – perhaps

nominative use defence

insignia perform the function of allowing the

wearer to express identity, affiliation, or

allegiance to University of Pittsburgh

the name and Betty Boop image are functional

aesthetic components of the product

Europe

Sign capable of graphical representation; distinctive (Art 2, ETMD)

Refusal of registration – “devoid of any distinctive character” (Art 3,

ETMD); “the shape of goods that is necessary to obtain a technical

result or gives substantial value to the goods” (Art 3, ETMD) >>

utilitarian functionality

Nestle v Cadbury (2012): single colours are registrable – Pantone

2685C purple is distinctive of Cadbury for milk chocolate per se

Libertel (2003), Dyson (2007): purpose of the requirement to be a sign

was to prevent unfair competitive advantage which would be an abuse

of trade mark law – the public interest in not unduly restricting the

availability of colours for the other traders

Singapore

TM is any sign capable of being represented graphically and which is capable of distinguishing goods or services (Cap 332, s 2)

Refusal of registration – “devoid of any distinctive character” (Cap 332, s 7); “the shape of goods that is necessary to obtain a technical result or gives substantial value to the goods” (Cap 332, s 7) >> utilitarian functionality

Hong Kong

TM may consist of … colours, sounds, smells, the shape of goods or their packaging and any combination of such signs

Refusal of registration – “devoid of any distinctive character” (Cap 559, s 11); “the shape of goods that is necessary to obtain a technical result or gives substantial value to the goods” (Cap 559, s 11) >> utilitarian functionality

Concluding Comments

Is “aesthetic functionality” a good thing?

If yes, what ought to be its boundaries?

Other devices to limit liability – no likelihood of confusion

(no infringement); nominative use defence

Aesthetic Functionality

Back in Vogue

Dr David Tan

Tuesday 24 Sep 2013

Hong Kong