Fashion brands may be able to obtain trademark protection for color marks applied to a specific position on a product in the European Union thanks to a June 12 decision by the Court of Justice of the European Union in Luxembourg in Christian Louboutin and Christian Louboutin SAS v. Van Haren Schoenen BV. This is a landmark case for brands that use distinctive colors as part of their trademarks.

French shoe designer Christian Louboutin—known for his luxurious high-heeled shoes with red soles—has been trying to obtain global trademark recognition for his signature red shoe soles for over a decade. It has not been an easy task.

After a long legal battle with Yves Saint Laurent, the U.S. Court of Appeals for the Second Circuit, in 2013, recognized that a single-color mark in the specific context of the fashion industry could acquire secondary meaning and serve as a brand source identifier. This decision confirmed that Christian Louboutin's signature red shoe sole was a “distinctive symbol” that had come to represent the brand and deserved trademark protection (provided the shoe wasn't monochromatic red).

Although Louboutin was similarly successful in acquiring trademark rights in China, Russia and Australia, Christian Louboutin's iconic red-soled shoes were not extended the same trademark protection in Europe.

In an effort to protect his brand globally, Christian Louboutin filed a lawsuit in the Netherlands in 2012 against Van Haren, a Dutch company whose retail stores were selling more affordably priced high-heeled shoes with red soles. The case centered on the technicalities of European trademark law, notably whether a trademark that consists of a color applied to the sole of a shoe consists exclusively of a shape—which is not entitled to protection, or whether it is a position mark, capable of trademark protection.

In Van Haren, the lower Dutch court ruled against Louboutin on grounds that the red soles were not separate from the shape of the high-heeled shoes. However, the Court of Justice of the European Union reversed that opinion, deciding that the law governing shape trademarks does not apply because the red sole mark is a position mark, and thus acknowledging that Louboutin's red soles are capable of protection under E.U. trademark law.

It is important to note that, while fashion is often considered a form of artistic expression, there are limited legal protections for fashion designs. This is because fashion is inherently functional; regardless of how fancy or expensive a garment is, its function is to keep you warm and clothed. Nevertheless, this decision by the European Union's highest court may encourage fashion brands to use colors, placement of color, and possibly combinations of colors to distinguish themselves from the competition, while simultaneously limiting the ability for signature elements of their designs to be copied by competitors.

It is also worth noting that courts in other jurisdictions, including the Federal Supreme Court of Switzerland, are still reluctant to consider the red sole as deserving of intellectual property protection, finding the coloring of the sole to be purely aesthetic.

While it is still too early to say precisely how the decision in Van Haren Schoenen will impact fashion brands, there are several best practices most should employ given its implied opportunity for fashion brands to expand their trademark rights:

• Evaluate whether the company has certain nonfunctional design elements that are entirely unique to its brand—like Louboutin's red shoe soles.

• If the design element is relatively new (less than five years), continue using that design element and expanding its use so you can prove it has acquired “secondary meaning” (where the consumer associates the design element with the brand) and therefore rendering it eligible for trademark protection in the United States and perhaps in Europe.

• If the company has been using a unique design element (like a color or combination of colors) for more than five years and that element has obtained consumer recognition, the company may consider contacting an attorney with knowledge in this area about seeking protection for that design element.

• If the company does not have a unique design element, consider creating one so it can be protected later on—intellectual property is a company asset, after all. The more identifiable this element is, the more likely it is for that design element to acquire secondary meaning and ultimately obtain trademark protection to prevent copyists from duplicating the company's design element. Most brands also find these elements to be helpful in marketing their products as well.

• Make sure to use this nonfunctional, unique design element consistently so that consumers learn to associate the company's products with the element.

Meeting the standard for whether a brand's consistently used, nonfunctional design element qualifies for trademark protection can be an intricate and lengthy process, involving consumer surveys, substantial advertising and marketing evidence, and other evidence illustrating the fact that consumers identify the element as belonging to that brand. It is wise for all companies branding—or who hope to brand—in this manner to consider the legal protection of all of their products as early as possible in the process.

Danielle N. Garno focuses her practice on issues faced by the fashion community, including startup phase and commercial advice, intellectual property—such as trademark and copyright infringement, social media marketing, advertising, and anti-counterfeiting, as well as employment and general business litigation.

Jacqueline Brousseau focuses her practice on trademark, trade dress, copyright, unfair competition and brand management. She has experience litigating federal trademark infringement, copyright, and design patent actions. She also has deep experience in pursuing anti-counterfeiting litigation, and has conducted counterfeiting seizures and investigations.