Is Louboutin’s “Red Sole” Mark Reasonable?
Case Study: Louboutin walk tall after “red sole” kicked back and forth in the CJEU
Never has a pair of shoes caused so much consternation in the courtroom as Christian Louboutin’s red soled stiletto.
Whilst footwear has always been a bit of a battleground for brands (with a host of recent cases proving this point ) Christian Louboutin’s “red sole” has reached a level of Intellectual Property infamy hitherto unmatched.
Christian Louboutin is a French fashion designer, born on the 7th of January 1964. During his early career, he had become known for designing elaborate women’s shoes and eventually become Roger Vivier’s  apprentice. After much success and aplomb – freelancing at Chanel and Yves Saint Laurent – Louboutin set up a boutique in Paris in 1991. Since this time, the famous Louboutin stiletto-heeled shoe have become ubiquitous across red carpets and boardrooms worldwide.
Synonymous with the Louboutin stiletto heel (and the brand overall) is its red sole. This was first introduced in 1993, as per Christian Louboutin’s recollection:
My sketches were not reproduced exactly as I had designed them and I couldn’t figure out why. The two-dimensional sketch was so powerful on paper, but when we turned into a three-dimensional object, it was somehow lacking energy. Frustrated after having tried different things to liven up the design, I spontaneously grabbed my assistant’s red nail polish and painted the sole. I instantly knew that this would be a success!”
Soon, every Louboutin shoe would adopt the red sole and it would become the designer’s calling card. Generally, this now takes the form of a single leather piece of leather affixed to the bottom of the shoe.
The red (specifically, Pantone 18-1663) sole is protected as a trade mark in several countries, and has become an incredibly strong brand asset for Louboutin and, as is typical, the subject of a range of trade mark infringement proceedings.
Many of these infringement proceedings have been predicated upon the validity of the trade mark – which is the subject this post.
Within the portfolio of legal action around this trade mark were proceedings brought by Louboutin, based on their Benelux trade mark, against Netherlandic shoe retailer Van Haaren. The alleged infringing article was their “5th Avenue by Halle Berry” – which as you might expect was also red-soled women’s shoe.
In the process of litigation, The District Court of the Hague proposed to ask the European Court of Justice (CJEU) a range of questions to identify whether the trade mark could be considered valid.
This led to the key question being posed:
Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive C 1 (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?”
As such, the key to the case was whether Louboutin’s Benelux trade mark (above) for their red sole was covered by the prohibition of the registration of shapes “which give substantial value to goods”.
The question sought to find out whether the concept of a three-dimensional “shape” (including volume, contours etc.) include other properties – in this case, colour.
Had this been found to be the case – Louboutin’s trade mark might have been ruled invalid. Interestingly, the Advocate General Spuznar’s opinion led some to believe that the mark would stuck off – stating a trade mark combining colour and shape may be declared invalid or revoked if previously granted.
In a press release on the 12th of June 2018, the CJEU stated:
In today’s judgment, the Court takes the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’.
Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.
In the present instance, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark 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 colour covered by the registration.
The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code.”
As such, the court found that a colour without an outline cannot qualify as a shape.
Whilst the depiction of the shoe in the registration provides an outline (and thus a shape) to how the colour is applied to the goods – the trade mark did not seek to protect the shape, but simply demonstrate the part of the product to which the protected colour is applied.
The application, in fact, explicitly states that it does not seek protection over the contour of the shoe.
Furthermore, as the registration covers a specific Pantone colour – the sign is viewed as not consisting “exclusively” of a shape.
As such, Louboutin’s Benelux trade mark remains valid and in force.
Why Is This Important?
There are a number of reasons why this outcome can be seen as a significant one – not only for Christian Louboutin, but the wider field of non-traditional trade marks and their enforcement.
1. Colour Marks and Monopoly Rights
Trade marks are monopoly rights, which grant their rightful owner exclusive use of the sign in the designated classification and jurisdiction.
It’s noted that the scope of colour marks, when compared to a word or logo, is quite wide.
This is because the criteria for determining infringement is based only upon similarity within the abstract concept of colour. Thus, it is much more difficult to determine when infringement has occurred.
When considering infringement of a word mark might review more definitive elements of the sign such as similarity in: look, phonetics and concept. In this case, the court would simply look at the application of a colour to the sole of a shoe.
As such, one might ask, at what point does a colour become dissimilar from Louboutin’s registered mark? Would a stiletto with blue sole be considered unique? In this way would an analogous mark be considered similar?
Furthermore, these questions may then extend to similar marks on dissimilar goods e.g. sporting apparel or other theoretically infringing examples.
It remains to be seen how Louboutin will enforce its trade mark, and whether it will test the theoretical outer limits of the scope of protection it may offer or avoid the risk of overexertion.
2. Valid (but only because of the small print?)
Finally, the judgement is particularly interesting insofar as it remains valid because of the detail of the registration – which concerns only the colour and its application to a certain area of a product.
It has been determined that the sign as registered is not a colour and shape – which is effectively prohibited as a registered mark.
In effect however, it could be argued that in practice that this is what the mark is – in so far as functionally this is what the trade mark protects in practice. It is simply just not present within the detail of registration or critical view.
Therefore, it might be seen that Louboutin enjoy many of the benefits of what is – in all but registered detail – a prohibited sign (though of course, the litigation would have to navigate this detail in each case which might be an Achilles heel to any of Louboutin’s arguments).
However, to the lay person, to whom this sign is intended to reach, these arguments are irrelevant.
Crucially, this stance may set a precedent for others looking to achieve a similar level of protection over their product category.
Summary: is the mark reasonable?
It remains that non-traditional signs such as Louboutin’s “red sole” colour mark are a double-edged sword.
Whilst, in theory, the scope of protection is high allowing the company to exert its rights across its product category – this comes at a price.
The broader scope of protection results in a wider net of infringement to navigate – and which rely upon intrinsically indeterminate criteria of similarity in the abstract field of colour. This can be expensive to enforce, and the imprecision of the mark’s limits means that it will always be, in some regards, contentious.
For an industry stalwart such as Louboutin, this is perhaps beneficial, as it allows a market leader to maintain its hegemony through selective enforcement. This is especially so as Louboutin’s and the mark’s reputation – further buttressed by this litigation – likely categorises it as “well-known”. Therefore, the designer is potentially able to enforce the mark very broadly.
In spite of the academic position, the perception of the sign in the minds of the general public can not be understated. The “soft” power of the mark of its perception in the market extends beyond the “hard” power of how it might be enforced – which in itself is remarkably broad in its potential scope. in light of this judgement, threat of potential litigation grants Louboutin an incredible competitive advantage in the deployment of the mark across their product category (and potentially even wider). Companies planning to create shoes with coloured soles may think twice; all the while Louboutin benefit from an increasing brand cache and freedom in their design.
Thus, the question as to whether the mark is reasonable lies outside of it’s registered scope – and in the operational effect the mark will have within its marketplace which is furthermore contingent upon Louboutin’s enforcement strategy. Thus, Louboutin’s in-house counsel are likely to have seen the last of the “red sole” conundrum – and that with such marks there will always follow endless litigation to determine exactly what rights can and should be enforced. For that reason, for most, such a mark would be more trouble than it is worth. However, for a market leader like Louboutin this is likely a price that they’re willing to pay.
Trainee solicitor (and fashion law enthusiast) Jordan Davies commented:
This case is interesting based on the long stranding history of Louboutin and the highly coveted, but seldom allowed colour trade mark. Stiletto shoes have always been the cornerstone of the brand and therefore, it could be said that the brand will therefore benefit from a combination of shape and colour although that is not explicitly registered. However, give that the Louboutin range spans much further than skyscraper heels, the colour of the sole is much more valuable to the brand than the indirect benefit of any combination mark. It will be interesting to see how far Louboutin will push the boundaries of the registration and I, like many others, have my popcorn ready for when the drama continues to unfold.”
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 Prominent examples include adidas’ “three stripes” victory; and Crocs’ design patent revocation.
 Roger Vivier Is widely understood to be the inventor of the stiletto heel.