Is there a fashionista who does not know the famous Louboutin shoes?
Since its creation in 1992, the famous French fashion house Louboutin uses red soles on all its design to “energize” its shoes. This red sole has become a distinctive sign and a legend for stars and clients all around the world.
In France, the red sole was protected by a figurative trademark filed on 29 November 2000 for shoes in class 25:
Louboutin used this trademark against several companies and in particular, against Zara which decided to sell red soled shoes. Louboutin made a seizure of the litigious products and claimed against Zara trademark infringement and unfair competition.
In 2011, the Paris Court of appeal rejected Louboutin’s claims and annulled its trademark.
The Court held that the trademark as filed did not satisfy the requirements of “clarity, precision, accessibility, understandability and objectivity” required by the case law, both French and EU.
The Court stated that “the represented form does not appear to be immediately identifiable as a sole” since, “the sole cannot be defined as a two dimension form that can be represented, as in the present case, by a flat figure, but by a curve, a thickness or any other element characterizing a three dimension form that only a perspective image can give […]”.
Additionally, the red color in the trademark « is not defined by a reference which would allow identifying it accurately », and the sole contains several shades of red.
The Court of Appeal concluded that the « red sole trademark » was null, on the grounds that “neither the form nor the color of the trademark application are determined with enough clarity, accuracy and correctness to be distinctive and to allow to identify the origin of a shoe”.
As regards to the unfair competition and parasitism, the Court held that “the acceptance of Louboutin’s claims would lead to give it the power to prohibit anyone from commercializing any shoe equipped with a red color sole”.
The Court concluded that “the only circumstances that the informed public and the specialized press can associate the trademark « Christian Louboutin » to a red color sole does not justify the perpetual appropriation, by the company Christian Louboutin, of the concept consisting in equipping systematically the female shoes with a red sole”.
Moreover, the price of Zara’s shoes (49 euros, i.e. ten times less than a Louboutin pair of shoes) together with the fact that Zara’s trademark was reproduced on its shoes was used by the Court as an argument to prove the lack of confusion between the two brands and their products.
As a result, Louboutin’s claims were all rejected.
Taking into consideration the gravity of this decision, the fashion house decided to lodge an appeal before the French Supreme Court.
However, on 30 May 2012, the Supreme Court which only rules on the application of the law confirmed the entire argumentation of the Paris Court of appeal.
As a result, Louboutin’s figurative trademark filed in 2000 is now definitely cancelled.
In the meantime, Mr Louboutin, as a reaction to the arguments raised by Zara, filed a new French trademark application on 25 October 2011:
This trademark includes the following description: The trademark consists of the colour red (Pantone 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark).
This new application does not appear to have been filed randomly and applies the teachings of the decisions.
It is on the basis of this new trademark, also filed in the US, that Louboutin brought a suit for trademark infringement against Yves Saint Laurent which sold red shoes with red sole.
In France, the saga continues since if Louboutin decides to act on the basis of its new trademark, the Court may have to rule on its validity.
According to French case law, it is possible that the new Louboutin trademark application be considered as valid in France.
Indeed, it has already been ruled that “the designation of the color by means of an identification code which is internationally known” could suffice to satisfy the requirement of precision for a trademark application. Moreover, the French intellectual code provides that “the placement, combinations or nuances of colors” could constitute a valid trademark.
In Louboutin’s case, the trademark application includes a Pantone reference for a red nuance and also describes the placement of the color on the product.
One concern thus may relate to the use of the red color on the heels of Louboutin’s shoes. Indeed, usually Louboutin’s heels, on their interior part, are of the same red color as the sole:
However, this part is not visible on the trademark application.
Therefore, there may be some discussions regarding the use of red color (Pantone 18-1663TP) on Louboutin’s heels.
Stay tuned for new developments in France.
This article was written by Boriana Guimberteau, Counsel at FTPA, specialising in intellectual property. FTPA is a full service law firm based in Paris.