Rarely has one brand’s footwear found itself at the center of as many noteworthy lawsuits in just as many courts across the globe as Christian Louboutin’s red soled-shoes. Almost a decade after Louboutin first took on Yves Saint Laurent in a highly-watched legal battle in a New York federal court centering on the brands’ respective red soles (and more specifically, Louboutin’s ability to claim exclusive rights in a red shoe sole), the Paris-based brand is in the midst of its latest trademark fight, this time against Amazon.
While Louboutin claims that it has “successfully collaborated [with Amazon for years] to fight counterfeits effectively,” the parties’ relationship seems to have broken down, leading Louboutin and a number of Amazon European Union entities to go head-to-head before a Brussels court. At issue: Amazon’s alleged failure to police its platform for counterfeit Louboutin shoes plus its practice of advertising of such infringing shoes by way of targeted consumer ads.
According to the complaint that Louboutin filed early this year, Amazon EU has repeatedly run afoul of the law by promoting over one hundred product listings for counterfeit “Louboutin” shoes on its French and German websites between March 25, 2018 and May 24, 2018, alone, no small number of which were designed as “Shipped and sold by Amazon.” More strikingly, Louboutin claims that at least some of those listings were marked as “Sponsored Products,” while others were presented to consumers by way of retargeting ads on Amazon’s website and the sites of third-party companies.
As a result, Louboutin asked a Brussels court to prohibit the European arm of the Seattle-based e-commerce titan from offering and/or selling products bearing “pure red soles [on] high-heeled shoes,” as that is a “well known” trademark that Louboutin “has used for more than 25 years around the world.”
Louboutin was handed an early win on March 1 when the court ordered that Amazon temporarily refrain from offering any red soled shoes for sale, pointing to the Benelux Convention on Intellectual Property provision that prohibits the use of trademarks that are identical to those of another on goods identical to those for which their mark is registered.
Amazon pushed back against the court’s preliminary decision, disputing, among other things, the scope of protection enjoyed by Louboutin as a result of its European Union and Benelux trademark registrations, and arguing that it is limited to “the exact reproduction of the Pantone 18.1663 TP color,” which is the specific hue that appears on Louboutin’s registrations. However, in a decision issued last month, the court held otherwise.
Writing for the court, Françoise Jacques de Dixmude held that Louboutin’s rights are not as limited as Amazon claims, and instead, extend to reproductions of the mark in different shades of red, as long as those differences are “insignificant for the average consumer.”
The court also asserted that in the instances where the shoes at issue were sold and shipped by third-parties, Amazon is still liable as EU case law states that liability “can be imputed to any person having played an active part in the commission of [a sale]” and who “could control it, directly or indirectly.” More than providing “a service consisting of allowing its customers to display [products]” on its site, the court asserted that Amazon advertises the shoes on its own site by way of a “systematic use of expressions, such as ‘our categories,’ 'our gift ideas,’ our selections” to promote the infringing footwear. Such language, according to the court, is “intended to promote not only the shoes at issue, but also the Amazon group, its services, its activities and its products.”
With such a determination in mind, the court ordered Amazon to immediately refrain from offering any infringing footwear (i.e., any footwear “using a sign identical to the red sole sign for high heels shoes) on the EU sites at issue, and imposed a $50 per day penalty for non-compliance with a cap of just over $55 million.
The decision comes on the heels of another EU-specific win for Louboutin, In a June 2018 decision, the Court of Justice of the European Union – the highest court in the 28-member bloc – determined that despite a prior advisory opinion, Louboutin's red sole is not prohibited from trademark protection, and actually, the color that appears on the Louboutin shoe sole is just that, a color (that identifies a source), and it can be protected.