The famous brand of shoes with heels and oversized red soles, which since 1992 has been so successful for their creator Louboutin, has long been immersed in a somewhat uncertain legal environment. Now a Dutch Court Adds New Dimension to Red Sole Saga by finding infringement, by Van Haren, of Louboutin’s red sole trade mark.
Louboutin Saga evolution:
1. In ZARA Case, the Red Sole is not a trade mark.
The French Judges declared the nullity of the trademark registration “red sole” owned by Louboutin for lack of distinctiveness. According to the Court of Appeal “the form, the color of the mark filed are not defined with sufficient clarity, precision and accuracy to be likely to give it its own distinctive character to allow to identify theorigin of a shoe”.In other words, the red soledid not allow Louboutin shoes to be distinguished from the other shoes. The Judges therefore dismissed the claim for damages for trade mark infringement on the grounds that they could not recognize a monopoly which “would be to give the power to ban anyone from selling shoes with red soles.”
2. In YSL Case: the Red Sole is a trade mark.
American Justice ruled in favour of two luxury fashion houses, Louboutin and YSL. The red soles could be a trade mark registration “unless the rest is in the same color.” Thus, Yves Saint Laurent had the right to market red shoes with red soles, while the red sole remains the emblem of Louboutin, for the other colors of shoes. The French shoemaker, who has for years been in a daily war against counterfeits, is now the sole creator and marketer of shoes featuring a red sole.
3. In Van Haren case: copying Red Sole on black shoes is infringing Louboutin.
Louboutin pursued Van Haren because they were offering for sale high heeled black coloured shoes with a red sole. Louboutin considered this use of the red sole to damage the distinctiveness of the Louboutin “red sole” trade mark. The Dutch Judge held that Louboutin’s trade mark infringement claim could be allowed because a visual similarity between Louboutin’s “red sole” mark and the red coloured sole used by Van Haren was found in an almost identical red colour on the sole of identical goods. Although Van Haren argued for a lack of distinctiveness in the “red sole” trade mark, because the red colour was not precisely defined and identifiable, the Judge held that the trade mark was considered to be a hybrid colour mark as it comprised not only the characteristics of an abstract colour mark, but also of a three dimensional trade mark for a specific red colour.
Whilst the French Judges decided in ZARA that a risk of confusion was not established, in particular because luxury shoes, such as those produced by Christian Louboutin, are directed toward a very different clientele to those produced by Zara, in this Dutch case, the argument that Louboutin can only be bought in exclusive shops for a price which is not comparable to the price of Van Haren’s shoe was, in contrast, considered irrelevant because one should also take into account the so called post-sale confusion that may be provoked by seeing ‘others wearing high heeled shoes with red soles’.
The District Court of The Hague granted an injunction against Van Haren, refraining them from the use of the trade mark in Benelux and ordered them to pay the procedural costs of Louboutin (€ 68.973,07).
Amélie Gérard 22 July 2013
IPcopy on colour trade marks – “Colour Me Blue”