The Ninth Commercial Court of Appeals in Moscow recently upheld the ruling of a lower court in connection with a lawsuit filed on behalf of Christian Louboutin. The Paris-based footwear and cosmetics brand filed suit in Russia’s Moscow Commercial Court in August 2015 against four Russian companies – InterPrestige Group, InterLuxParfum, Image Parfum and Klementina – alleging that they were selling counterfeit Louboutin fragrances. Louboutin sought injunctive relief to prevent the companies from continuing to sell the infringing goods and upwards of 11 million rubles ($170,000) in damages as a result of the copying of its beauty range.
In April, the lower court sided with Louboutin, awarding the brand, which is best known for its red soled footwear, 24.3 million rubles ($368,000) from InterPrestige Group, InterLuxParfum, Image Parfum and Klementina in connection with the sale of counterfeit perfumery products. The court also prohibited the four Russian firms from selling any perfumery goods misrepresented as authentic Louboutin products.
Following an appeal filed by the defendants this spring, the Russian Commercial Court of Appeals upheld the lower court’s ruling. While the defendants argued that the perfume products were imported legally and that there was a lack of similarities between the contested trademarks and the trademarks of the plaintiff, the Court of Appeals refused to overturn the damages award and injunctive relief awarded to Louboutin by the lower court.
This is hardly Louboutin’s first foray into court; the company made headlines beginning in April 2011 when it initiated legal action against YSL in connection with its red sole trademark. The Paris-based footwear brand was issued a federal trademark registration in the U.S. for the red sole mark and filed suit against YSL in connection with the latter’s Tribute sandals and others styles, which feature a red sole. In August 2011, U.S. District Judge Victor Marrero denied Louboutin's request to prevent further sales of the YSL shoes and questioned the validity of Louboutin’s trademark, writing, "Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette."
Louboutin appealed to the Second Circuit to reverse Judge Marrero's decision. The court ultimately held that single color trademarks are registerable, protectable and enforceable in the fashion industry. In particular, the court held that while the bright red soles of Louboutin's high heels were so distinctive (as a result of their acquired secondary meaning) that they deserve trademark protection, such protection is limited to a red sole only where the remainder of the shoe is a contrasting color. As a result, Louboutin’s trademark registration (and thus, the rights derived from it) was edited to only apply to shoes that contrast in color to the red sole. Further, the Second Circuit court affirmed the lower court’s denial of the injunction against YSL, which would prevent YSL from selling the all-red shoes in question.
In addition to be a highly watched case in the fashion industry, Louboutin v. YSL is a significant one in the legal field, as it is one of the few appellate court decisions addressing whether a single color is capable of functioning as a trademark (it held a single color will almost never be inherently distinctive and will only become a trademark after it has acquired secondary meaning), and more specifically how fashion-industry participants may protect the distinctive features of their designs by establishing secondary meaning, even if the distinguishing feature is just one color.