Christian Louboutin and Yves Saint Laurent made headlines several years ago for what has come to be known as one of the most infamous footwear lawsuits in fashion history. Louboutin filed a trademark suit against its fellow high fashion brand, alleging that by selling all-over red shoes that also bore a role sole, YSL was infringing its federal trademark registration. In response, YSL filed a counterclaim, seeking to have the court cancel Louboutin’s red sole trademark registration, on that grounds that it lacked distinctiveness and/or was merely ornamental, thereby making it ineligible for trademark protection.
That battle, which played out in federal court in New York over a course of two years, was just the beginning of a larger effort for Paris-based Louboutin. After claiming a victory against YSL when the court upheld the validity of its red sole trademark in the U.S., the Paris-based footwear brand turned its attention to the rest of the globe in order to establish a monopoly over red sole footwear.
While some of Louboutin’s international trademark matters are still pending a few years later, including its case against Dutch footwear brand Van Haren, it has managed to secure a victory against Kamal Family Footwear and Adra Steps two separate footwear manufacturers in India this week. According to a ruling from the Delhi High Court on Tuesday, the two footwear brands that Louboutin named as defendants in its suit were actively infringing its red sole mark and the court ordered that they immediately and permanently cease all sales of the infringing footwear and pay approximately Rs 10 lakh ($15,550) in damages to Louboutin.
Implicit in the court’s decision is a much more significant win, though: A finding that Louboutin’s red sole trademark is valid in India. In siding with Louboutin, the court held that “a shoe with a red sole clearly identifies [Louboutin’s] product and distinguishes it from the goods of every other person. The 'Red Sole' trademark has thus become the signature of the [Louboutin brand].”
Valid or Not?
At issue before these international courts, just as in the Louboutin v. YSL case, is whether Louboutin’s red sole is, in fact, a valid trademark, and more broadly, as the U.S. Court of Appeals for the Second Circuit put it, “whether a single color [Chinese red in the cases at hand] may serve as a legally protected trademark in the fashion industry and in particular, as the mark for a particular style of high fashion women's footwear.”
This has been the core inquiry in the trademark infringement cases centering on Louboutin’s red sole.
The argument against protection of Louboutin’s red sole – particularly in the realm of fashion, where color is an important element – is aesthetic functionality, the trademark doctrine that holds that product features that are not purely useful in nature, but are aesthetically pleasing and an important part of the commercial success of a product, are not eligible for trade dress or trademark protection. In short: By awarding Louboutin exclusive rights over the color red for shoe soles, there is a risk of anti-competitive consequences for others that would like to use the color red in this manner.
The U.S. Court of Appeals for the Second Circuit remedied the potential hardship of robbing others of the color red for shoe soles by holding that Louboutin could only claim protection over its red sole if the body of the shoe is a contrasting color. So, because YSL’s shoes were monochrome red – meaning that the body of the shoe was red in addition to the sole being red – the court held that Louboutin’s trademark did not extend that far and thus, YSL was in the clear legally.
Both parties actually claimed a victory, with Louboutin celebrating the non-cancellation of its mark and YSL rejoicing in its ability to continue to sell its all-over red footwear.
But Louboutin has not been so successful in all jurisdictions. This past March, Switzerland’s highest court turned down Louboutin’s final appeal for protection, holding that its red soles are merely aesthetic and as a result, are not eligible for trademark protection. And in doing so, the Federal Supreme Court in Lausanne, right along with the more recent finding by the Delhi High Court, marked yet two more chapters in Louboutin's global fight for the color red.