Image: Neiman Marcus

THE FASHION LAW EXCLUSIVE — Christian Louboutin has secured a victory in a long-running case over its wildly litigious red soles. Following a heated legal battle with Yves Saint Laurent that ended in 2012, Christian Louboutin’s famous red shoe sole has led to legal battles across the globe … in Switzerlandin France (against Zara), in Belgium, in China, in India, and beyond. One such trademark fight – which Louboutin initiated against Dutch footwear brand Van Haren barely a year after the final ruling in the Louboutin v. YSL case – has been underway ever since. Until now.

In 2012, Van Haren caught the eyes of Louboutin’s legal counsel after it launched a collection of high-heeled shoes complete with red soles. Paris-based Louboutin – which, as of 2017, has sold more than 1 million pairs of its $700+ heels, sneakers, and flats, all of which bear a lacquered Chinese red sole, enabling consumers to easily distinguish its products from other shoes on the market – swiftly responded with a trademark infringement lawsuit.

Louboutin’s counsel argued in their complaint that the Dutch high street brand was causing confusion amongst consumers, the central claim in a trademark infringement case, thanks to its use of red soles. More than that, they asserted that Van Haren was intentionally looking to profit from the established appeal of Louboutin’s world-famous red sole, which was registered as a trademark in the Benelux region years prior.

In an early round of the case, the District Court of The Hague ordered Van Haren to immediately cease its manufacturing and sale of black and blue shoes bearing red-soles, and ordered the brand to pay damages to Louboutin as a result of its infringement. Van Haren appealed this decision and the parties ended up before the Court of Justice of the European Union (“CJEU”). This summer, the EU’s highest court was tasked with determining the common question in nearly every case involving Louboutin: whether the footwear brand’s red sole trademark is valid.

Specifically, the CJEU asked whether the color that appears on the Louboutin shoe sole is a color, or whether it is an unprotectable “sign” that consists exclusively of a shape or another characteristic that gives substantial value to the product on which it appears.

The panel held that Louboutin’s Benelux trademark registration explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red color covered by the registration. As such, the CJEU panel held that the color that appears on the Louboutin shoe sole is just that, a color (that identifies a source), as opposed to being a sign, and sent the case back down to the District Court of The Hague, which has handed Louboutin an ultimate victory.

A panel of judges for the Court of The Hague held on Wednesday that Louboutin’s Benelux trademark for its red sole “is valid, and it is established that Van Haren has infringed that trademark.” The court also rejected Van Haren’s counterclaims against Louboutin.

With that in mind, the court has ordered that Van Haren pay damages to Louboutin (to be determined by the District Court), including its “full legal costs” and attorney’s fees. Moreover, it is requiring the Dutch company to “cease all use of the sign challenged by Louboutin in this matter,” to provide Louboutin with “the full names and addresses of professional customers to which Van Haren has sent the item,” and to compile information regarding the production price and selling price of the shoes at issue, as well as the volume sold, among other info.

A representative for Van Haren said that the company is deciding whether it will pursue an appeal of the court’s decision.

Either way, the fight between these two is not over just yet. Louboutin’s red sole trademark registration (no. 008845539), which was issued by the European Union Intellectual Property Office (“EUIPO”) in January 2010, is currently the subject of cancellation proceedings with the EUIPO, as initiated by Van Haren early last year.