Los Angeles – Can a designer obtain trademark protection for a specific color used on the soles of its shoes? This question appears to be one step closer to finality after a recent decision was handed down by a French court against designer Christian Louboutin.
The case was initiated in 2008, but Louboutin did not exhaust all of its appeals against Spanish fashion designer Zara until this week. Louboutin had accused the Spanish designer of counterfeiting and unfair competition, claiming that red-soled shoes have been the signature trademark of its shoe collection for over twenty years.
This case is particularly interesting because of its implications for the ongoing battle in a New York Appeals Court between the famous shoe designer and its rival Yves Saint Laurent. Louboutin also sued its competitor Yves Saint Laurent in 2011 over what it considered a trademark infringement of the red sole on its shoes. The lower court rejected Louboutin’s request to stop the sale of YSL’s similarly colored shoes and denied a request for $1 million in damages. A decision has not yet been reached by the new panel of judges in the current appeal. However, Louboutin is relying on the same argument used by Tiffany & Co. in a recent lawsuit against one of its competitors for its trademark blue boxes. Tiffany won its trademark infringement case by showing that consumers recognized the blue box exclusively as that associated with the Tiffany & Co. brand. A decision by the New York Appeals court is highly anticipated by a number of designers who either currently use red on the soles of their shoes, or would like to incorporate the popular trend in their own footwear lines.
Louboutin quickly released a statement after the findings were handed down in its most current lawsuit. The Paris based company is anticipating that its competitors will see this latest decision as diminishing or eliminating its rights to the famous red sole on its shoes. However, Louboutin claims that it continues to own valued and enforceable trademark rights to its red sole trademark in France and the rest of the world. Louboutin also claims that other court decisions have recognized the strong association between Christian Louboutin and its red sole trademark. As such, Christian Louboutin insists that it will continue to enforce and protect its rights to its red sole trademark.