image: Neiman Marcus

Christian Louboutin’s red sole shoes are some of the most famous and easily identifiable on the planet. As of last year, 27 years after setting up shop, the Paris-based brand was selling 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. Yet, rights in the red sole – Louboutin’s most valuable asset, with shoes amounting for a reported 95 percent of its annual sales (which amounted to a reported $850 million in 2013) – are influx across the globe, especially India after a court issued 3 different rulings in 3 different cases over the past 9 months.

In line with the larger trademark infringement litigation tear that Louboutin’s legal team has been on since filing suit against Yves Saint Laurent in a New York federal court in 2011 to protect its red sole, the famed footwear brand filed suit against a handful of Indian defendants in 2016, accusing them of selling red soled shoes without Louboutin’s authorization.

Deciding that case last December, Judge Mukta Gupta of the High Court of Delhi sided with Louboutin, stating, “It is evident that [Louboutin’s] ‘red sole’ trademarks have acquired a well-known character” in India, and that Louboutin – which “has been using its ‘red sole’ trademarks extensively and continuously since 1992” – is the exclusive holder of the red sole trademark. In other words, Louboutin has a valid trademark for its red shoe sole in India and by using that mark without Louboutin’s permission, the defendants were running afoul of trademark law.

Several months later, in May 2018, the same court issued a very different decision. In response to Louboutin’s trademark infringement claims in a separate but very similar case, Judge Valmiki J. Mehta held  that Louboutin’s red shoe soles are not protected by trademark law because a single color is incapable of being a trademark in accordance with India’s Trade Marks Act of 1999. As a result, Judge Mehta decided that Louboutin could not claim exclusive rights over such use in India, and dismissed the case in favor of the defendants.

The loss for Louboutin was significant; not only did the brand walk away without the injunction and monetary damages it was seeking in connection with the defendants’ sale of counterfeit red-soled shoes, the court’s ruling meant that Louboutin’s formerly valid trademark registration could not be enforced in India. Practically speaking, the decision could serve to open the floodgates for brands to legally profit from the established appeal of the Louboutin brand and its red sole.

That is until last month when the High Court of Delhi issued a decision in yet another similar but distinct case. On July 31, Justice Yogesh Khanna held that Louboutin had been able to prove that “the defendants’ adoption and [use] of the counterfeit [red sole] trademark …  unequivocally amounts to the infringement of [Louboutin’s] registered trademark.” As a result, the court granted Louboutin’s request for a permanent injunction, thereby barring the defendants from using Louboutin’s red sole trademark, and also awarded Louboutin nearly $30,000 in punitive damages.

The ruling stands in stark contrast to the one that came directly before it, giving rise to very real uncertainty as to the validity of Louboutin’s wildly valuable red sole trademark registration in India, which the court will ultimately sort out, potentially upon appeal from the defendants in the most recently-decided case.

Stay tuned …