It remains one of the most famous fashion law disputes of the 21st century: the clash between fashion giants Christian Louboutin and Yves Saint Laurent. In April 2011 Christian Louboutin had sued Yves Saint Laurent in New York Federal Court for infringement of its red shoe sole US-American federal trademark it maintained since January 2008.

In its lawsuit, Louboutin asserted that the red-soled YSL shoes were being sold in many of the exact same stores and websites as its own, thereby enabling YSL to confuse consumers and “take unfair advantage of the enormous goodwill and brand recognition in the red sole trademark that [Louboutin] has developed over the past two decades.” The sale of “identical and/or highly similar” shoes by YSL was actively impairing Louboutin’s “ability to control its reputation, and the quality and careful distribution of Louboutin footwear.”

Instead of agreeing to quietly settle the case amongst themselves outside of court, YSL took action of its own and applied to invalidate the rival’s trademarks in turn. And thus ensued a trademark fight that would soon engulfs courts all over the world.

It’s a no from Judge Marrero.

However, the Court of First Instance did not even deal with the question whether their distribution infringes the Louboutin trade mark. According to the judge, there were serious doubts as to whether the USPTO should have registered the trademark at all.

The New York court further develops trademark law by dealing in detail with the protectability of so-called color trademarks. At the beginning, it stated that US trademark law grants – in general – protection for colors as such. However, colours often lack the necessary distinctiveness because they do not provide any indication of the origin of the goods. To give an example: …the color red does not necessarily bring to mind Louboutin shoes.”

In addition, in the case of fashion articles, trademark protection for colours may be considered if the subject of the trademark is a pattern or a colour combination which is the expression of a creative concept. However, the Louboutin mark does not concern a design or colour combination.

Against this background, the judge raised the fundamental question whether it should be possible to monopolise individual colours for fashion items. He denied this on the grounds that registering a trademark for the colour red would undesirably affect other designers and thus competition. The objection that Louboutin focused on the use of the colour red on shoe soles did not convince the judge.

Per the judge, the Louboutin trademark with its “boundless object” did not qualify for protection.

The Second Instance

The footwear brand argued that the court had failed to properly apply existing Supreme Court precedent from 1995. In Qualitex, the Supreme Court held that a color is, in fact, capable of meeting the legal requirements for trademark registration, assuming that it has acquired secondary meaning.

Thus, Louboutin appealed the judgement. As media interest rose, more and more parties seemed to flock to the courts. Eleven law professors wrote an amicus curiae brief in support of YSL while Tiffany’s sided with Louboutin. That’s no wonder since Tiffany’s had a vested interest in protecting it’s own special robin’s egg blue colour.

In a highly-anticipated decision in late 2012, the Second Circuit overturned the lower court’s decision. It stated that Louboutin’s red sole had, in fact, “acquired secondary meaning as a distinctive symbol that identifies the Louboutin brand.” Elaborating, the court held, “We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―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.’”

However, YSL did not leave court that day without a win of its own. The panel limited the trademark to shoes where the sole contrasts in color with the rest of the shoe. In other words: Louboutin’s trademark does not extend to shoes that have a red body and a red sole. Consequently YSL’s completely red shoes did not infringe on Louboutin’s trademark. Ultimately, they changed the registration’s language to read as follows: “a red lacquered outsole on footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.”

Beyond the US

Emboldened by this win, Louboutin looked towards other shores. It started a campaign to enforce it’s trademark rights in Europe and Asia as well, with mixed results. On one hand, a series of courts upheld the validity of the famed footwear brand’s trademark. Examples are the EUIPO, the Hanseatic High Court and the High Court in Beijing. On the other hand, the French Court of Cassation invalidated Louboutin’s french trademark on his home turf. Louboutin has since re-filed while specifying the shade of red as Pantone 18-1663 TP.

A colour is not a form

The ECJ ruled on the topic as well when Louboutin suited the Dutch brand Van Haren. According to European law, signs which are composed wholly of the “form” of the goods do not qualify for registration. The court clarified that the term does not in fact cover colour as well. Therefore, Louboutin has trademark protection in Europea as well. The maison might opt to register an European Trademark as well.


Image: Louboutin