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Stepping Into Red Territory

Posted by: Karla Aspiras on August 10, 2012

Hotly anticipated this summer is the outcome of a court battle between two high-end fashion houses, Yves Saint Laurent and Christian Louboutin. Today is the one-year anniversary of the decision in the case and now a decision on its appeal is awaited.

The southern district court of New York that issued the original decision on August 10, 2011, which dealt with the issue of use of a single color for shoe outsoles. It started when YSL released a line of monochromatic shoes, including the soles, as part of its Cruise 2011 collection.

Christian Louboutin first approached YSL regarding four models of monochromatic red shoes from the Cruise 2011 line. YSL refused to withdraw the questioned models from the market, so Louboutin decided to sue. He filed suit for trademark infringement, dilution, false designation of origin and unfair competition against YSL. Louboutin also asked for an injunction. An injunction would have the court order YSL to stop from manufacturing and selling any of the four red monochromatic shoes while all the above-mentioned claims are in the middle of litigation.

Judge Marrero of the southern district court of NY ruled against Louboutin on the matter of this injunction. Therefore, YSL can continue manufacturing and selling shoes with red soles.

One reason the court gave for denying Louboutin’s request for an injunction is color depletion. Color depletion theory addresses the concern that colors are limited, and to grant exclusive rights to colors is anti-competitive and would deplete the available stock of colors. They said that allowing Louboutin protection for the red sole would “cast a red cloud over the industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette.” But this is inaccurate, because Louboutin’s trademark registration clearly limits the mark to “women's high fashion designer footwear.”

 Christian Louboutin Shoes

It would have been a valid cause of concern if, indeed, Louboutin was claiming ownership of the color red, instead of use of the color red for the outsole for high fashion designer footwear. If it were the former, then it would be anti-competitive for all kinds of companies and industries across the board, not only for the fashion industry where use of color is ubiquitous.

The court recognized that Louboutin’s red sole had acquired secondary meaning — that it served as an indicator of source of a product. But it was also decided that it did not matter.

Christian Louboutin testified in the injunction hearing and explained how the red sole came about. He chose red for the outer sole because of its energy. The court took that to mean that the choice of red for Louboutin soles is solely for an aesthetic, ornamental, non-trademark purpose and therefore non protectable as a trademark.

But what can be a stronger identifier of source than the red sole? You know it’s a Louboutin immediately, even from a distance, just by seeing the red outsole, than seeing the stylized “Louboutin” stamped underneath.

Last May, French Cour de Cassation, the highest court in France invalidated Louboutin’s red sole mark in France. It was hinged on a technicality where the registration lacked a specific Pantone color reference. Louboutin is re-filing for a trademark in France.

Louboutin is not the only luxury fashion house having trademark problems. Earlier this year, Hermes lost its suit against a Chinese clothing company that obtained a registration for a Chinese name very similar to how Hermes is pronounced in Chinese.

Tiffany's Iconic BoxThese setbacks cause damage not only to the companies that own the marks, but also highlight very thin intellectual property protection for goods in the fashion industry. Fashion designers usually look to trademark for protection, but decisions like the denial of Louboutin’s injunction further erode the little trademark rights fashion designers have.

We’ll have to wait and see until the New York appeals court decision on Louboutin’s appeal comes out and for the meantime, Tiffany's better watch its blue jewelry boxes and Hermes its signature orange.

Karla Aspiras is a Trademark Analyst at Interbrand NY.

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