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Red-soled heels not only represent the image of a fearless and independent woman, but have been synonymous with the famous Christian Louboutin name since 1992. The shoes are known for their distinctive red soles which usually contrast sharply with the rest of the shoe. .
Yes, trademarks are not just about logos and brand names, but can take the form of, but are not limited to, color, smell, container, or shape. Although these product identifiers are inherently incapable of distinguishing specific products from each other, they may very well become distinguishable with extensive use; are significantly different; and are very atypical. Naturally, Christian Louboutin filed a trademark application protecting their red sole in 2008.
In 2011, Yves Saint Laurent (YSL) began marketing monochrome red shoes with a red sole.
Christian Louboutin (L) against Yves Saint Laurent (D)
As a result, Louboutin filed a lawsuit in which YSL successfully argued in the United States District Court that the marks lacked distinctiveness and had not acquired
secondary meaning since you can’t stop anyone from using just one color in the fashion industry.
“Secondary meaning” is when a distinctive feature of the product can identify the source of the product rather than the product itself. Dissatisfied with the result, Christian Louboutin appealed to the United States Court of Appeals which ruled that the red sole mark indeed had acquired a secondary meaning since the red sole was able to identify the source of the product. Accordingly, the red-soled mark was found to be effective, but only “to a red lacquered outsole that contracts with the color of the adjoining “upper” and agree with the Court a quo insofar as he“refused to prohibit the use of a red lacquer outsole applied to a monochrome shoe”.
In 2018, Mr Louboutin’s luck was again tested when the European Union’s highest court was asked to consider his claim to the distinctiveness of his shoes. Louboutin had filed a lawsuit in 2011 against Van Haren, a Dutch company whose outlets sold high-heeled, red-soled women’s shoes at affordable prices. Louboutin claimed that the shoes sold by Van Haren infringed his brand’s shoe mark. This trademark, registered in Belgium, the Netherlands and Luxembourg, referred to “the color red (Pantone 18 1663TP) applied to the sole of a shoe”. Maciej Szpunar, general counsel for the court, said Mr. Louboutin’s red soles were not a separate entity from the shape of his high-heeled shoes, and that shapes generally cannot be filed under the law of the European Union. However, in 2019, Den Haag ruled in favor of Christian Louboutin after asking the ECJ for a precise interpretation of the term “form”. A sign consisting of a shape and a colour, in which the shape plays a role in the spatial delimitation of the colour, does not consist exclusively of the shape of the product. The addition of a color to the shape mark therefore prevents the application of the ground for exclusion provided for in Article 2.1.2 of the Benelux Agreement.
More recently, Christian Louboutin suffered a loss in Japan after filing infringement proceedings against Eizo Collection Co Ltd, claiming they violated their red sole brand and competed illegally. The Japanese court was not persuaded that the red soles trademark had acquired a secondary meaning since red soles were commonly used in Japan to attract consumers. Additionally, the Court held that consumers are unlikely to confuse the wares since a famous pair of Louboutin heels could “cost you an arm and a leg” and can cost up to $700 and, therefore, the argument that Eizo is in illegal competition was speculative. .
It remains to be seen what the outcome would be in a South African court should such a dispute ever arise. Would the famous red-soled shoe company be able to establish secondary meaning, or would their claim get the boot? Perhaps our courts would be inclined to go along with the Japanese view since Louboutin isn’t the only red-soled shoe and surely won’t be confused with other people’s merchandise, given the high price tag. Arguably, if it were to be found that Louboutin had indeed acquired a secondary meaning, they might only be able to apply the protection insofar as it relates to that specific red or to a red that is likely to be substantially similar or confuse consumers.
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