Footwear designer Christian Louboutin, has just suffered another set-back in the company’s ongoing effort to own the red sole, this time in Louboutin’s native France. In 2008, Louboutin filed a lawsuit in Paris against Spanish clothing manufacturer and retailer Zara, after Zara sold a red-soled shoe. This May, the French Cour de Cassation (the French appeals court) irrevocably invalidated Louboutin’s trademark to the red sole in France. The decision appeared to rest on what some might consider a technicality, with the Cour de Cassation noting that Louboutin’s France trademark registration lacked a specific Pantone color reference, a standardized color reproduction code used universally in a variety of industries and in trademark registration[1]. Accordingly, the Cour de Cassation faulted the registration for its lack of precision and distinctiveness. Without the degree of precision that French law considers essential to a trademark, Louboutin was criticized for simply trying to maintain the registration of a “concept,” that of putting bright red soles on shoes produced by the same brand. A “concept,” said the Court, is not sufficient to justify trademark registration. Louboutin was also ordered to pay €2,500 (approximately $3,600) of Zara’s litigation costs for the failed legal action.
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| Christian Louboutin’s YoYo heels vs. Zara’s red-soled slingbacks |
This result may well undermine Louboutin’s marketing strategies. Will it legally influence in anyway Louboutin’s appeal of the 2nd Circuit U.S. decision in which it lost an earlier fight over the red-sole to YSL? Last year, U.S. District Judge Victor Marreno refused to grant Louboutin’s request for an injunction to stop YSL from selling a red-soled shoe. That decision found that Louboutin’s color was ornamental and aesthetically functional in the fashion industry, rather than a “source” indicator as a trademark must be. Unless Louboutin wins its appeal of the YSL decision, there are likely to be many more red-soles on the market.
[1] In the UK, for instance, Louboutin’s rights in the red sole, specifically, the color red Pantone No. 18.1663TP, have been protected since 2007 by means of a trademark registration.
Lizbeth Hasse
Lizbeth Hasse is the founder of Creative Industry Law. Her practice encompasses intellectual property, media, entertainment and business counseling for corporate and individual clients. She is also a neutral expert in these areas, negotiating and resolving IP, business and media matters.
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