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The heels with the red soles represent not only the image of a
fearless and independent woman but are synonymous with the famous
name Christian Louboutin since 1992. The shoes are
known for their distinctive red soles that are usually in stark
contrast to the remainder of the shoe.
Yes, trademarks are not merely for logos and brand names but
could take the form of, amongst others, colour, smell, container,
or shape. Despite these product identifiers being inherently
incapable of distinguishing the specific goods from another, they
may very well become distinguishable through extensive use; are
substantially different; and are very unusual. Naturally, Christian
Louboutin applied for a trademark protecting their red sole in
2008.
In 2011, Yves Saint Laurent (YSL) started marketing
monochrome red shoes with a red sole.
Christian Louboutin (L) vs Yves Saint Laurent (R)
Accordingly, Louboutin instituted legal proceedings where
YSL’s contended successfully in the US District Court that the
marks were lacking distinctiveness and had failed to acquire
secondary meaning since you cannot preclude anyone from
using a single colour in the fashion industry.
‘Secondary meaning’ is when a distinctive product
feature can identify the source of the product rather than the
product itself. Unsatisfied with the outcome Christian Louboutin
appealed to the US Court of Appeal which held that the red sole
mark had indeed acquired secondary meaning since the red
sole was capable of identifying the source of the product.
Accordingly, the red sole trademark was held to be enforceable, but
only “to a red lacquered outsole that contracts with the
color of the adjoining ‘upper'” and concurred
with the Court a quo insofar as
it“declined to enjoin the use of a red lacquered
outsole as applied to a monochrome shoe”.
In 2018, Mr. Louboutin’s luck was tested again when the
European Union’s highest court was asked to review his claim to
his shoes’ distinctiveness. Louboutin had filed a lawsuit in
2011 against Van Haren, a Dutch company whose retail outlets were
selling affordably priced high-heeled women’s shoes with red
soles. Louboutin claimed that the shoes sold by Van Haren infringed
on his brand’s trademark for footwear. That trademark,
registered in Belgium, the Netherlands and Luxembourg, referred to “the color red (Pantone 18 1663TP) applied to the sole of a
shoe.” Maciej Szpunar, an advocate general for the court, said
that Mr. Louboutin’s red soles were not a separate entity from
the shape of his high-heeled shoes, and shapes typically cannot be
trademarked under European Union law. However, in 2019, Den Haag
found in favour of Christian Louboutin after asking ECJ for a precise interpretation of the term “shape”. A sign consisting of a shape and a colour, in
which the shape plays a role in the spatial delimitation of the
colour, does not consist exclusively of the shape of the product.
The addition of a colour to the shape mark therefore prevents the
application of the ground for exclusion laid down in Article 2.1.2
of the Benelux Agreement.
More recently, Christian Louboutin was handed a loss in Japan after instituted
infringement proceedings against Eizo Collection
Co Ltd, claiming that they were infringing on their red sole
trademark and were unlawfully competing. The Japanese court was
unpersuaded that the red sole trademark had acquired secondary
meaning since red soles have commonly been used in Japan to attract
consumers. Moreover, the Court held that consumers were unlikely to
confuse the goods since a famous pair of Louboutin heels could “cost you an arm and a leg” and can price up to $700 and,
therefore, the argument that that Eizo is unlawfully competing was
speculative.
It remains to be seen what the outcome would be in a South
African court should such a dispute ever arise. Would the famous
red sole shoe company be able to establish secondary meaning, or
would their claim get the boot? Perhaps our courts would be
inclined to side with the Japanese view since Louboutin is not the
only shoe with a red sole and will surely not be mistaken for the
goods of others, given the hefty price tag. Arguably, if it were to
be held that Louboutin had indeed acquired secondary meaning, they
might only be able to enforce protection insofar as it pertains to
that specific red or one that is capable of being substantially
similar or confusing to consumers.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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