10 January 2012

The Red Sole Fight Continues...

When the U.S. Court of Appeals hears oral arguments later this month in shoe designer Christian Louboutin's appeal to protect his trade mark on red lacquered soles, the court will be presented with two starkly different views of the role of colour in fashion design…

In April 2011,Christian Louboutin – who is known around the world for the Chinese red on the bottom of its high-end fashion high heels – sued one of its competitors, Yves Saint Laurent for trade mark infringement. YSL sold a completely red shoe which, being an all-red shoe, also included a red sole. In a decision from a District Judge, Louboutin’s request for an injunction preventing YSL’s sale of the shoe was denied. The judge held that the monopolisation of single colour such as the “colour red” without limitation was too broad and inconsistent with the US trade mark registration system. The decision caused a considerable stir within the fashion and trade mark world and resulted in an appeal from Louboutin in which it was argued that the coloured soles serve only to identify the Louboutin brand and that the judge’s blanket rule that use of a single colour on any “fashion item” was not protectable was not supported by previous case law and would create a dangerous precedent for the fashion industry.

Yves Saint Laurent countered that Louboutin, by his own admission, had an aesthetic purpose for lacquering the soles of his shoes red. So Louboutin is not entitled to a trade mark under US case law which has stated that a colour can be trade marked only when it "can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." When colour serves an aesthetic function (as YSL contends it does in Louboutin's shoes), it cannot be trade marked.

On Wednesday, YSL's interpretation of trademark law got a boost from a group of 11 law school professors, who filed an amicus brief in support of YSL. "This court should recognize that the shadow cast by a mark in a single colour on a fashion item creates enormous uncertainty for other designers and should regard claims of single-colour trade marks in fashion with considerable scepticism."

"A woman who buys red shoes is doing so for a reason," the brief argues. "Red shoes have a particular meaning to her, and to others, that cannot be supplied or even approximated by shoes of a different colour. Given the substantial creativity involved in both fashion design and fashion consumption, courts should not lightly allow one particular competitor to monopolise particular fashion submarkets."

Each party’s respective commercial interests demand that they continue fighting – YSL will not limit their future collections by agreeing to never using monochrome red shoes, nor will Louboutin wish to leave the litigation with a critical court decision in respect of their trade mark registration hanging over their heads.

Oral arguments will take place at 2pm on 24 January. Expect a lot of high heels in the audience!

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