The legal battle over the use of the term ‘Red Gold’ in jewelry is raging on. Beverly Hills jeweler, Chris Aire, recently sued almost 20 luxury fashion brands, claiming trademark infringement for their use of the term ‘Red Gold’ to describe their fine jewelry and watches.
One of the brands sued was LVMH subsidiary, Hublot, who moved for summary judgment claiming that the term ‘Red Gold’ is generic and that any use of the term is not trademark infringement.
The judge in the lower court dismissed Hublot’s motion for summary judgment. Typically, a motion for summary judgment rests on the argument that there is no legal basis on which the original complaint can stand. The judge held that the issue of whether the term ‘Red Gold’ is not a matter of law to be decided by the court, but rather a matter of fact to be decided by a jury.
This was a significant ruling in that it signifies the change in the court’s view of the legality of protecting a color associated with a brand. In the past, it was very difficult to attain trademark protection over a color. But with recent cases, such as the Christian Louboutin vs. YSL case, where the court held that Louboutin’s trademark over it’s red sole is valid, show a propensity towards granting protection over colors associated with a brand.
In her ruling, the judge stated that while the term ‘Red Gold’ may have been generic when Aire first began to use it to describe his pieces, it may have since attained distinctiveness and therefore protection. However, this is a question of fact rather than a question of law.
LVMH has now hit back appealing this ruling to the 9th Circuit, claiming, once again, that Aire’s trademark in not valid. LVMH argues that the lower court’s decision is not in line with precedents in trademark law, because the courts have held in the past that when a mark becomes generic, there is no longer any trademark protection and that protection cannot be attained again.
Essentially what LVMH is arguing that once a trademark becomes generic, it will always be generic. Thus, they believe that since the term ‘Red Gold’ is generic, no amount of distinctiveness will give the mark trademark protection.
Stay tuned to see what the 9th Circuit decides…