Legal wars over the colour of outsoles

How much importance are you giving the soles of your shoes? What colour are they? And what if the colour of the outsoles were red, what would that mean to you? Would you ever think that a legal war was being waged over them? Oh, but it is.

This shoe designer has used red soles on all his creations for at least the past 20 years. He sells about 240,000 pairs a year in the US- Jeanine Rizzo

If your name were Christian Louboutin, red outsoles would mean the world to you. This renowned shoe designer has used red soles on all his creations for at least the past 20 years. Latest figures show that he sells about 240,000 pairs a year in America alone, with the cheapest shoes costing approximately $400 (€305). He has even successfully obtained a trade mark for red soles, quoting the colour ‘Chinese Red’ together with its Pantone number as the colour he is staking his claim on. Obtaining a trade mark generally means that nobody else in the fashion industry is able to use the colour red for shoe outsoles.

Enter YSL (now re-branded as Saint Laurent Paris) and their 2011 resort collection. The collection featured four pairs of shoes with red soles. These are the YSL ‘monochromatic shoes’. The shoes in dispute were completely red, including the soles.

Louboutin saw red, called in his attorneys, and filed suit against YSL for trade mark infringement claiming $1 million (€763,601) in damages plus a preliminary injunction to halt the production of all shoes with red soles by YSL. He claimed that YSL made unauthorised use of his trade mark. YSL countered this argument claiming that red soles had been used in fashion for longer than Louboutin’s trade mark, citing as examples red heeled shoes donned by Louis XIV, the Wizard of Oz’s Dorothy’s own ruby slippers, and a number of specimen from their own archive.

At first, the US court denied Louboutin the preliminary injunction stating that in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition. In his decision, the judge looked at colours as a tool used in the fashion industry, one which all designers should be free to use. Bolstered by this, YSL was hoping to invalidate Louboutin’s trade mark, but Louboutin was not prepared to go down without a fight, and filed an appeal.

Designer and president of the Council of Fashion Designers of America, Diane von Furstenberg, showed her solidarity with Louboutin by accompanying him to his court sittings while wearing his famed red-soled shoes. Other designers and fashion moguls, such as Tiffany & Co, have filed legal briefs in support of Louboutin – Tiffany the famed jewellery company has its own trade mark for the colour powder blue used in its boxes and packaging.

In Europe we have accepted the registration of colours as trade marks in certain industries. The Courts of Justice of the European Union (CJEU) had started off not unlike the US judge in the Louboutin case, by saying that colours are finite and that there should not be a monopoly over any one colour. Over the years the jurisprudence has changed, with the CJEU accepting that for strictly delineated industries, such as mobile telephony, colours could be registered as trademarks. This saw the registration of the colours red, orange and green going to named telecommunications companies.

Aesthetic features such as stripes have also gone from being strictly off limits due to their decorative function to being symbols guaranteeing origin. After all, the function of a trade mark is to guarantee origin. The CJEU went from one opinion to the other over a number of years and different Adidas cases. Adidas banked on consumer education which stems from the trade mark rule that when the mark acquires secondary meaning it is worthy of being registered. This helped Adidas garner favour in the eyes of the Court to protect their three stripes.

Earlier this month the American Court of Appeals handed down its decision in the Louboutin case. The court held that Louboutin has the exclusive right to shoes with red soles, with the exception that other shoemakers are allowed to make monochromatic shoes which are red, and that therefore due to their being one colour could have red outsoles. This meant that YSL did not infringe Louboutin’s trade mark as their shoes are red all over. Needless to say both companies are seeing the judgement as a victory for each of them, but with this Louboutin has established himself as a major force in the fashion industry so for him the victory is more significant.

www.fenechlaw.com

This article is not intended to offer professional advice and one should not act upon the matters referred to in it without seeking specific advice.

Dr Rizzo specialises in intellectual property law at Fenech & Fenech Advocates.