For the discerning fan of designer shoes, there is a big difference between a Manolo Blahnik and a Jimmy Choo. But no matter which brand is your favorite, if you are a shoe aficionado, you are certain to know the signature calling card of Christian Louboutin: the red sole. But just because this has been the French fashion designer’s calling card, does that mean he can trademark the red sole? The matter has come up in court both in the United States and in Europe, but with very different results.
Recently, Louboutin accused a Dutch retail store, Van Dalen Footwear, of infringing on its registered trademark of the red-soled shoes. But Van Dalen filed a counterclaim resulting in Louboutin losing its trademark in Belgium, the Netherlands and Luxembourg.
According to Michael J. Allan, a partner in the Washington and New York offices of Steptoe and member of its intellectual property and litigation groups, the judge in Brussels focused on the shape of the mark, rather than its color, and decided that the shape gave no specific value. This, says Allan, was a very different ruling from the one that Louboutin received from the U.S. 2nd Circuit Court in 2012.
“One of the big issues in the U.S. was the contrast between the color of the sole and the outside of the shoe,” Allan explains. The issue then became whether the trademark was functional, and whether it provided a “significant, non-reputational advantage to a competitor.” In the U.S. Louboutin had a broad trademark registered with the U.S. Patent and Trademark Office, and brought a case against Yves Saint Laurent.
In that 2nd Circuit case, says Allan, the judge considered the fashion industry as a whole, and whether or not color can be trademarked at all. It became a matter of whether or not the law could essentially take a color away from designers, creating a competitive disadvantage for all companies other than Louboutin. In the end, the judge decided, “There is a distinction between the sole of the shoe and the body of the shoe. If the sole is distinct from the body of the shoe, that signals a Louboutin shoe, and there can be trademark rights on the sole,” explains Allan. In the Yves Saint Laurent case, the entire shoe was red, so it was not infringing.
Allan emphasized that trademark cases are extremely fact-specific, especially when dealing with matters of color. The court considers the scope of the color, where it is used, how it is used, and if others need to use the color. The next time a case comes up in the fashion industry, the Louboutin case will likely have little bearing, because each circumstance is unique – just like a good pair of heels.
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