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.  

The French court of appeals ruled late last week in Christian Louboutin’s case against Spanish fast-fashion retailer, Zara. Paris-based Louboutin, which has been aggressively policing unauthorized uses of its trademark red sole in recent years (most notably filing suit against Yves Saint Laurent in a New York federal court in April 2011), filed a trademark suit against Zara. The Cour de Cassation upheld the lower court’s June 2011 ruling that Louboutin’s trademark registration was too vague to warrant a win for the footwear brand, as it lacked a specific Pantone color reference for the “red” soles and further, that there is no proven risk of consumer confusion between the two brands and their shoes.

With the foregoing in mind, the court sided with Zara, and ordered Louboutin to pay the fast fashion brand’s $3,600 legal fees. On the heels of the court’s decision, a representative for Louboutin released a statement, saying, “Much of the discussion either implies or states that through this ruling we have lost our rights to our world famous Red Sole Trademark. We would like to clarify that what has been disputed and canceled is only one French registration of said Red sole Trademark. Christian Louboutin continues to own valid and enforceable trademark rights in its Red Sole Trademark, including in France itself as well as throughout the world.” 

The rep continued on to note that to date, “A number of court decisions have recognised the strong association between the Christian Louboutin brand and the red sole trademark, including in France. Christian Louboutin will continue to protect and enforce its rights to its Red Sole Trademark, which has been its iconic signature for the past 20 years. We would also like to take this opportunity to thank all of the people who continually show support to our brand.”