LVMH’s Attempt to Deem ‘Red Gold’ Mark Generic Fails

LVMH is embroiled in a legal war with Beverly Hills jeweler, Chris Aire, over a trademark for “Red Gold.” And, LVMH lost a battle Monday with the denial of its motion for summary judgment.

This all started in 2011 when Solid 21, Inc. filed a lawsuit against 17 luxury watch brands for trademark infringement over the use of the trademark “Red Gold.” One of those 17 brands is Hublot, which is owned and operated by French luxury goods conglomerate, LVMH.

The “Red Gold” trademark refers to a special alloying of gold with a distinct color that is used in fine jewelry and watches that Chris Aire designs and sells.

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Pieces from Chris Aire’s Red Gold Collection

The case has gone through the different levels of the judicial system with a lower court granted Breitling, one of the brands sued, a motion to dismiss and declared Solid 21’s trademark generic. Aire then appealed the decision and took the case to the 9th circuit arguing that the lower court decided prematurely because the lower court judge engaged in “premature fact-finding.”

The 9th circuit granted Aire’s motion to appeal and revived the lawsuit, and explained its findings that “Solid 21 ha[d] alleged in its complaint and submitted supporting documentation indicating that its “red gold” mark is registered in accordance with the Lanham Act. Solid 21’s federal registration of its trademark constitutes prima facie evidence of the mark’s validity.” Thus, finding the lower court’s ruling premature and reversing the decision and remanding the case back to district court.

Sold 21 has since made tolling agreements with many of the brands sued and dismissed without prejudice the lawsuits against them. The lawsuit against Hublot remains however, and in April of this year Hublot argued that the case should be dismissed and the trademark deemed generic and therefore invalid because the term has been used to describe a gold-copper alloy by many in the jewelry industry for over a century.

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A Hublot Watch Featuring Red Gold

And, so we come to Monday where the court denied Hublot’s argument and held that the question of whether the mark is generic and therefore invalid is a “very close question” that a jury must decide and is not enough to grant a motion to dismiss.

The outcome of this question shows a growing trend to giving brand’s a presumption of validity over a trademark they may have acquired for a specific color. Last year, Christian Louboutin’s red-sole trademark was deemed valid when Yves Saint Laurent attempted to invalidate is in a lawsuit that Louboutin initiated against YSL.

This desire to give fashion brands protection over colors that have come to signify and represent the brand is a bit of a departure from the past, where trademarking a color was deemed practically impossible.

And, while this case hasn’t come to a completion and the “Red Gold” trademark hasn’t been deemed valid or invalid, its interesting that the question of trademarking a color has become a jury issue rather than judge issue, meaning that it is something that can be discussed and debated rather than just simply having the judge decide on the merits of the case.

It will be interesting to see how this lawsuit plays out and who will come out on top!

 

source: “Louis Vuitton Loses Bid To Sink ‘Red Gold’ Mark As Generic,” Law360. 

 

Beeta J.

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