Will Christian Louboutin Lose His Sole?

By Pritika Ramesh

Christian Louboutin, the world renowned designer known for his famous “red bottom” shoes, is fighting to keep his trademark for “the colour red (Pantone 18 1663TP) applied to the sole of a shoe.”[1] According to a non-binding opinion from an advocate general at the Court of Justice of the European Union (“CJEU”), Louboutin’s trademark may be invalid in the European Union (“E.U.”).[2] The mark received protection in the United States (“U.S.”) in 2012 after the U.S. Court of Appeals for the Second Circuit issued a ruling in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.[3] However, trademark law is only recognized in the jurisdiction for which the trademark is filed and granted, so it is possible that Louboutin may lose his protection in the E.U. even though he has a valid trademark in the U.S.[4]

In Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., the appeals court disagreed with the United States District Court for the Southern District of New York’s ruling that a color cannot be eligible for trademark protection.[5] The appellate court cited Qualitex Co. v. Jacobson Products Co., a 1995 Supreme Court case involving the protection of a color for dry-cleaning pads, and held that the district court’s ruling was inconsistent with the holding of that case.[6] The district court distinguished Louboutin’s case from the Supreme Court ruling in Qualitex Co. v. Jacobson Products Co. because the protection of a color in the dry cleaning industry is not as restrictive as granting trademark protection in the fashion industry where color is a major element of a designer’s creativity.[7] Additionally, the lower court determined that the color was attached to the functionality of the design because aesthetics, such as color, shape, and design, serve a function in the fashion industry.[8] The appeals court, however, overturned that determination and ruled 1) that there can be no per se rule forbidding trademark protection in one industry over another, and 2) that granting trademark protection for a color should be a question of fact for whether the trademark would allow the trademark holder to monopolize the relevant market.[9] In Louboutin’s case, his trademark was valid for the Pantone 18 1663TP red shade on the outsole of footwear because it was distinctively associated with Louboutin’s brand in the minds of consumers.[10] However the trademark rights were limited, and did not include the color of the adjoining (“upper”) portion of the shoe.[11]

The CJEU, on the other hand, found in Christian Louboutin et al. v. Van Haren Schoenen BV that Louboutin’s mark qualified as a shape mark, or “a mark consisting of the shape of the goods and seeking protection for a color in relation to that shape.”[12] The CJEU’s opinion emphasized that a trademark is invalid if it is “exclusively [the] shape that gives substantial value to the goods,” essentially ruling that the color of Louboutin’s soles cannot be a trademark because it is connected with the shape of a high-heeled shoe sole.[13]

According to Sanjay Kapur, partner and trade mark attorney at intellectual property firm, Potter Clarkson LLP, “[t]his could mean that Louboutin would not be able to stop its competitors, including haute couture fashion houses, from offering shoes with red soles. The red sole could therefore become ubiquitous, which would seriously reduce the cachet associated with the Louboutin brand.”[14] If this was true and came to fruition in the U.S., Louboutin would also have to deal with the danger of his mark becoming invalid without distinctiveness or secondary meaning in the eyes of consumers. The loss of trademark protection in one area of the world potentially has a negative effect on the value of the brand in all relevant international markets since good will is built up based on a brand’s international presence.[15] If the CJEU panel adopts this opinion in the upcoming months, it will likely increase the number of non-Louboutin red-soled shoes marketed within the European Union, which would weaken and dilute the Louboutin trademark beyond the E.U.[16] The implementation of this ruling has the potential to crush Louboutin’s sole.

[1] Kate Morley, Christian Louboutin’s Red Sole Trademark Could Be Invalid, The Telegraph (Feb. 6, 2018 4:50 PM), https://www.telegraph.co.uk/news/2018/02/06/christian-louboutins-red-sole-trademark-could-invalid/.

[2] Id.

[3] Michael C. Dorf, A Federal Appeals Court Upholds Louboutin’s Trademark for Red-Soled Shoes: Has the Law Granted Too Much Protection for Intellectual Property, Verdict (Sept. 12, 2012), https://verdict.justia.com/2012/09/12/a-federal-appeals-court-upholds-louboutins-trademark-for-red-soled-shoes.

[4] Venable LLP, Louboutin v. Van Haren, Lexology (Feb. 14, 2018), https://www.lexology.com/library/detail.aspx?g=dc430859-247c-4080-bf64-2a45edd813be.

[5] Id.

[6] See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 212 (2d Cir. 2012).

[7] See Michael C. Dorf, A Federal Appeals Court Upholds Louboutin’s Trademark for Red-Soled Shoes: Has the Law Granted Too Much Protection for Intellectual Property, Verdict (Sept. 12, 2012), https://verdict.justia.com/2012/09/12/a-federal-appeals-court-upholds-louboutins-trademark-for-red-soled-shoes

[8] Id.

[9] See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 220 (2d Cir. 2012).

[10] See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 709 F.3d 140, 142 (2d Cir. 2013).

[11] Venable LLP, Louboutin v. Van Haren, Lexology (Feb. 14, 2018), https://www.lexology.com/library/detail.aspx?g=dc430859-247c-4080-bf64-2a45edd813be.

[12] Opinion of Advocate General Szpunar, Christian Louboutin et al. v. Van Haren Schoenen BV, C-163/16, Paragraph 41.

[13] Venable LLP, Louboutin v. Van Haren, Lexology (Feb. 14, 2018), https://www.lexology.com/library/detail.aspx?g=dc430859-247c-4080-bf64-2a45edd813be.

[14] Kate Morley, Christian Louboutin’s Red Sole Trademark Could Be Invalid, The Telegraph (Feb. 6, 2018 4:50 PM), https://www.telegraph.co.uk/news/2018/02/06/christian-louboutins-red-sole-trademark-could-invalid/.

[15] See generally Ella Chochrek, Louboutin Wins Trademark Battle in India, Footwear News (Dec. 22, 2017 12:04 PM), https://footwearnews.com/2017/business/news/louboutin-trademark-lawsuit-win-india-470964/ (“The goodwill and renowned reputation of the ‘Red Sole’ trademark has spilled over into India from various countries around the world, and consumers were well aware of this goodwill and reputation even before the plaintiff’s trademark was first formally launched in India.”).

[16] Venable LLP, Louboutin v. Van Haren, Lexology (Feb. 14, 2018), https://www.lexology.com/library/detail.aspx?g=dc430859-247c-4080-bf64-2a45edd813be.