Christian Louboutin (Louboutin), a Paris-based luxury shoemaker, known for his high-end shoes with bright, lacquered red bottom outsole first made the collection available to the public in 1992. Soon after the launch of these handcrafted collections, they became a preferred choice by the Hollywood actresses and Paris’ fashion establishment. In 2008, the U.S. Patent and Trademark Office (USPTO) granted a trademark registration upon an application filed by Louboutin for the “Red Sole Mark” in a significant font which was printed on the soles of all the shoes.
In early 2011, it was learnt by Louboutin that competing French fashion house Yves Saint Laurent (YSL) was marketing and selling a “monochrome” line that featured a single color on the entire shoe, including an all red shoe with a red insole, heel, upper and outsole. Louboutin thereafter filed trademark infringement, dilution, and unfair competition claims in April 2011, against YSL in the United States District Court for the Southern District of New York seeking a preliminary injunction to bar YSL from marketing and selling any shoes, including the monochrome red shoe, which was deceptively similar to its Red Sole Mark. Against this, YSL counterclaimed to cancel the Red Sole Mark on the grounds that it was not a mark entitled to be protectable because of the fact of it being merely “ornamental” and “functional.”
In August 2011, the Court did not affirm the Red Sole mark’s validity and denied the injunction as well as the alleged infringement and held that - single color trademarks were inherently “functional” and could never be protected as trademarks in the fashion industry. Additionally, the Court held that, “allowing a single artist/designer to appropriate/monopolise an entire [color] shade would unduly hinder not just commerce and competition, but art as well.” On appeal, the Second Circuit disagreed and held that the District Courts ruling per-se was inconsistent with the Supreme Court’s decision which held that single colors alone could sometimes serve as valid trademarks if the trademark owner could prove that consumers associated the particular color with their brand or service, as opposed to finding it merely ‘decorative’ or ‘visually pleasing’ for example, the blue box of Tiffany & Co., pink fiberglass insulation from Owens-Corning etc.
With regards to the Red Sole Mark, the Second Circuit analyzed several factors like the advertising expenditures incurred, media coverage, and sales success, as well as consumer surveys submitted by Louboutin to determine any secondary meaning and explained ‘Secondary Meaning’ as when a product feature can identify the source of the product rather than the product itself. The Court held that Louboutin’s red soles had indeed acquired a “secondary meaning” as a distinctive symbol and ordered the USPTO to modify the validity of the Red Sole Mark to apply to situations only when the red lacquered outsole contrasted with the remainder of the shoe. However, the Court also upheld the District Court’s denial of the infringement as to the YSL monochrome red shoe.
A similar situation was faced by Louboutin upon a complaint for Trademark Infringement filed in the European Union High Court, against a footwear brand, Van Haren. Van Haren’s retail outlets were apparently selling high heeled shoes with red soles at affordable prices. Louboutin claimed that Van Haren’s shoes were infringing his registered mark. However, Van Haren countered stating that, red soles were not a separate entity from the shape of its high heeled shoes, and shapes could not be protected under the European Union Law. Consequently, the Court asked Louboutin to review his claim of distinctiveness in his shoes.
Recently, Louboutin instituted trademark infringement proceedings against Eizo Collection Co. Ltd. (fashion and apparel brand) for selling red soled shoes and competing unlawfully. However, since Louboutin did not have any trademark registration in Japan, the case was filed under the Unfair Competition Law. The Japan Patent Office had refused the mark at the examination stage and Louboutin preferred an appeal in the Tokyo District Court, where the matter was ruled against Louboutin stating that red coloured high heeled shoes for women was not recognised as a source identifier mark for Louboutin’s shoes. The Court also pointed out that, the difference between the shoes sold by the two brands was, Eizo’s red soled shoes were of rubber whereas, Louboutin used leather.
The foregoing rulings offer a relief to the fashion industry, ensuring that unconventional uses of color as a brand and source identifier would be entitled for protection, as long as where a secondary meaning exists.
