Louboutin Loses Latest Fight to Register Red Sole Trademark in Switzerland

Christian Louboutin lost a recent quest to obtain federal trademark protection for its red soles in Switzerland. According to local Swiss media outlets, the country’s highest court turned down the Paris-based footwear brand’s final appeal for protection, holding that its red soles are merely aesthetic and as a result, are not worthy of trademark protection.

The Federal Supreme Court in Lausanne affirmed the Federal Administrative Court’s April 2016 decision, which classified the brand’s famed red sole as a “decorative element,” as opposed to an identifier of source – the latter of which is the purpose of trademark law. Louboutin appealed the lower court’s decision, but as of last week, the Supreme Court ruled against Louboutin, as well. The court held that while Louboutin does maintain trademark protections in other countries, including the United States, China, Russia and Australia, that does not mean it is entitled to the same level of protection in Switzerland. 

The Louboutin v. YSL Aftermath

The decision comes several years after Louboutin initiated a highly-followed trademark battle against Yves Saint Laurent in connection with the rival brand’s red soled shoes. Louboutin filed suit against YSL in the U.S. District Court for the Southern District of New York in 2011 after YSL released a collection of monochrome footwear in various colors, including red. YSL’s Tribute, Tribtoo, Palais and Woodstock styles consisted of monochrome coloring (i.e. red sole, red shoe; purple sole, purple shoe).

Louboutin asserted in its lawsuit that YSL was liable for trademark infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution, in connection with Louboutin’s federal registration for the red sole trademark, which was granted by the U.S. Patent and Trademark Office in 2008. Louboutin sought, among other things, a preliminary injunction preventing YSL from marketing its red monochrome shoes or any other shoe incorporating Louboutin’s red sole trademark.

In response to Louboutin’s suit, YSL filed a counterclaim, seeking to have the court cancel Louboutin’s red sole trademark, alleging that it lacked distinctiveness and/or was merely ornamental or functional, thereby, making it ineligible for trademark protection.

After making the rounds through the district court and the Second Circuit Court of Appeals, the appeals court held that while Louboutin’s red sole trademark had, in fact, achieved secondary meaning in the minds of consumers (aka: consumers were able to identify the red sole as coming from Louboutin), the brand failed “to show that the secondary meaning of its red sole mark extended to uses in which the sole did not contrast with the upper part of a shoe (i.e., on monochromatic red shoes).”

As a result, the court ordered the U.S. Patent and Trademark Office to limit Louboutin’s red sole trademark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe, finding that the red sole trademark was valid and enforceable only as modified.