By Danielle Daquino and Matt Burgess, Director.
Protecting your shoe DNA isn’t an easy feat, as two luxury heavy hitters have recently discovered. Just last week, a U.S Court handed down a decision in the ongoing legal battle between luxury shoemakers’ Christian Louboutin and Yves Saint Laurent. The ongoing fight since 2008 has seen Louboutin take this battle to the 2nd US Circuit Court of Appeals in New York, in a bid to protect their registered trademark. Louboutin have affirmed that the ‘China Red’ outer sole is synonymous with their brand. It seems that the U.S Court agrees with this acclamation.
Louboutin is regarded as one of the leading shoe designers worldwide. To give you an idea, projected sales in 2011 was $135 million in the U.S alone. The label is renowned for no advertising, high prices and undisputed quality. It wouldn’t be far fetched to say that the company is the crème de la crème for every woman who has an affinity for beautiful shoes. Any woman who dons the red sole should be prepared for an enviable gaze from those around her. After all, those that lust for these shoes can expect to pay up to a cool $4000 for a single pair. It is no wonder Louboutin has literally put up a fight with all their might and ‘sole’.
The cult of the red – soled shoe has grown into an empire since Louboutin first started painting its soles in 1992. The polarization of the red – soled shoes has been heightened through celebrities and its international cult status. These red outer soles were granted trademark protection by the U.S Patent and Trademark Office in 2008. The trademark granted outlined, ‘…the colour(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear’.
Not all happy feet…
Was it only a matter of time before competitors capitalized on the profits to be reaped from the distinguished China Red soles? Or was the use of this shade simply old news revamped?
The legal battle began when Louboutin sought an injunction against YSL in 2011. This request came after the release of YSL’s 2011 Resort Collection. Louboutin struck while the iron was hot, after YSL launched a line of monochromatic shoes with an uncanny resemblence to ‘their’ shade of red. Louboutin requested that four YSL styles with red outer soles be pulled from the shelves.
YSL was not afraid to launch back with an attack on the fellow luxury giant. YSL argued that selling monochromatic shoes was simply nothing new. In fact, YSL had already launched the monochromatic shoes in a 1970s collection. David Bernstein, lawyer for YSL, argued, ‘Louboutin’s trademark should never have been granted. We just don’t think that any fashion designer should be able to monopolize any colour’. On that note, this question was then put to the 2nd US Circuit. The three judge panel considered the monopolization of single colour in the fashion industry.
Decision
This decision was part affirmed, and part reversed. Essentially, both parties can walk away with seemingly happy feet. The Second Court stated that the grant of the original trademark in 2008 appeared to be too broad. Louboutin were granted acquired distinctiveness with red soles that have a contrasting colour on the rest of the shoe. Narrowing the trademark claim saw the heavy hitters at YSL walk away with their monochromatic shoes lining their soles. The court held that an all over shoe design that is monochromatic red cannot be protect.
U.S Circuit Judge Jose Cabranes spoke of the fierce repercussions on the monopolization of the coveted ‘China Red’. He discussed how harming competition via the monopolization of a colour does not speak justice.
There are several instances where the law recognizes that a single colour can be distinctive for particular goods or services. It is imperative to note that this is all about context. For Christian Louboutin, the context is the flash of the red sole with a contrasting colour. Essentially, the red flash with a contrast has equated to a trademark. The same does not stand for all red monochromatic shoes.
What does this mean?
Louboutin will stand as the only fashion house granted the right to put a red sole on any colour stiletto.
The label has had its application for red sole shoes accepted for registration by the Australian Trade Marks Office. Some may see this as only a matter of time before the floodgates open to a bevy applicants opposing the trademark through IP Australia. However, Louboutin is regarded as one of the two biggest heavy hitters in terms of shoes in the fashion world. It may seem doubtful that any Australian labels will be brave enough to put up a fight.
Australian designed Peep Toe shoes were actually brave enough to lacquer their heels with the famous red sole. These shoes are around the $300 price mark, and were lacquered in red for several years. The label changed their soles to purple in 2009 with little contest. Are labels such as Peep Toe being hailed subservient or smart? It seems surrendering their red soles were in their best interest.
Attaching a colour to a brand is an easy way to gain recognition – look at Cadbury’s long-standing battle for recognition that it and the colour purple are synonymous. Louboutin has sent out a clear message in the fashion industry – don’t let them see red.
This blog is for discussion purposes only. This must not be considered legal advice.
For legal advice on this topic and references to any information in this article, please contact
Matt Burgess, Director:
Phone: +61 405 722 739
matt*bselaw.com.au
Skype:burgoasp
Connect with Matt on Linked In
Image Credit: Salvatore Vuono
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