Christian Louboutin Trademark Europe Update
LOUBOUTIN WINS KEY LEGAL BATTLE TO PROTECT SIGNATURE RED SOLES FROM COPYING
On June 12, 2018, the European Court of Justice (“ECJ”) handed down a landmark ruling in favor of Louboutin, in which it was determined that Van Haren, a Dutch company, had infringed on Louboutin’s protected trademark by selling a range of red-soled shoes. The case stems from years of litigation dating back to 2012 between Louboutin and the Dutch footwear company in which Louboutin alleged that Van Haren’s “Fifth Avenue by Halle Berry” collection infringed on its “Red Sole” trademark registration within the European Union.
The ruling follows a February 6, 2018 non binding opinion from the ECJ’s Advocate General Szpunar (“Szpunar”) in which it was determined that Louboutin’s “Red Sole” mark qualifies as a shape mark, or more specifically, “a mark consisting of the shape of the goods and seeking protection for a color in relation to that shape.” Christian Louboutin et al. v. Van Haren Shoenen BV, C-163/16, Paragraph 41. Szpunar continued, noting that the “Red Sole” registration was likely not valid under European Union (“EU”) law as the EU deems a trademark invalid where it consists exclusively of a shape that gives substantial value to the goods.” Here, Szpunar argued that the red color used on Louboutin’s shoe soles could likely not be a trademark as it is has become part of the shape of the shoe, thus making it exclusively a shape mark, as described above, and taking it outside the scope of valid protection.
However, on June 12, 2018, the ECJ sided with Louboutin and went against Szpunar’s opinion, holding that the red shoe sole is not incapable of gaining trademark protection. The ECJ noted that Louboutin was not seeking to protect the shape of the shoe as both Szpunar and Van Haren had argued, but the application of a specific color to a specific part of the shoe. The court further agreed with Louboutin that this specific shade of red on the sole of the shoes enables the public to attribute the origin of the shoe to the shoe’s creator, Christian Louboutin himself.
This case will now be referred back to the Hague court where it was originally brought, which is expected to confirm the ruling of the ECJ and uphold the validity of Louboutin’s red sole trademark.
Color Marks and Protection in the U.S.
This decision will likely have little effect on United States law, as U.S. courts look at the effect of the color on the product and on consumer perception. Over the years, a variety of consumer goods companies have waged battle over color and its protectability.
The question of whether a color can be protected as a trademark or trade dress was addressed in 1995 by the Supreme Court’s decision in Qualitex, which involved a claim for trade dress protection of the green-gold color of a dry cleaning press pad. The Court held that it could find no “principled objection to the use of color as a mark in the important ‘functionality’ doctrine of trademark law.” Thus, “. . . color alone, at least sometimes. Can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”
In more recent cases, like in 2017, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) held that General Mills’ Cheerios brand, which is over 77 years old, could not claim exclusive rights over the yellow tone of its cereal boxes. The court noted that the color was not distinctive of Cheerios because so many other breakfast cereals sell their brand in yellow boxes. Furthermore, there was little evidence to convince the court that the relevant customers associate the color yellow alone with the source, i.e. General Mills’ Cheerios.
In regards to Louboutin’s US trademark, the issue was handled differently than in the EU. In 2011, Louboutin sued Yves Saint Laurent (YSL) for infringement of Louboutin’s red sole, specifically in connection with Louboutin’s US Trademark Reg. 3,361,597 below:
During that litigation, Louboutin’s attempt to obtain a preliminary injunction against YSL was denied with the Court holding that the red sole trademark was not enforceable. Louboutin appealed to the United States Court of Appeals for the 2nd Circuit in which the Court held that the mark had developed “secondary meaning” in the public eye, albeit “limited” secondary meaning, and thus was a valid and enforceable trademark. Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. Sep. 5, 2012). The Court focused on the distinctiveness of the Louboutin red color sole on the specific shoe and the secondary meaning it had gained in the relevant market. The Court further noted that due to the fact that the specific shade of red used by Louboutin was associated with its shoes by the relevant public, it was distinctive and thus protectable as a trademark. However, the Court qualified that the extent of trademark protection for Louboutin was limited to use in which a red outsole contrasts with the color of the remainder of the shoe.
In conclusion, it seems evident that in certain circumstances, a color mark can be a valid, enforceable mark, both in the US and the EU. What seems to be the most important aspects of this protection is whether in the minds of the relevant consumers, that specific color is attributable to the origin of the specific goods. Here, in both the EU and US cases, the court’s found that the relevant public attributes and associates the specific shade of red on the bottom of shoes with Louboutin, and thus the color mark should be protected.