Introduction

Christian Louboutin has applied for protection of his well-known red-sole trademark in many countries, including Switzerland. The trademark consists of the red outer sole of high-heel shoes.

The Institute of Intellectual Property and the Federal Administrative Court denied protection for Louboutin's red-sole trademark. On appeal, the Federal Supreme Court decided the case (4A_363/2016, February 7 2017).

Original distinctiveness

The court had only to examine whether the red-sole trademark is originally distinctive. Louboutin made no argument of a secondary meaning.

The court recognised that the red-sole trademark constitutes a position mark that must be distinguished from both a colour mark and a three-dimensional mark. Regarding a position mark, the position of the mark, as well as the mark itself, must be special in order for the combination of both elements to be surprising. In this case, the court held that the outer sole of a high-heel shoe is an ordinary place to apply trademarks. Further, it held that the colour red is commonly used in the fashion industry as a decorative element. It therefore concluded that a red outer sole does not constitute a surprising element qualifying as a trademark, but qualifies rather as an element commonly used for the design of shoes. In order for such a sign to qualify as a trademark, the sign (ie, the red outer sole) would need to be eye-catching and distinctive from all decorative elements commonly used in the industry at the time of the trademark registration.

Further decisive arguments

The Supreme Court clarified two general principles.

In case of the examination of original distinctiveness, the relevant point in time is that of the trademark registration, not the date of the application for trademark protection. Hence, the relevant factual circumstances (ie, whether a sign is originally distinctive) are those on the date of the decision of the trademark office or, on appeal, of the judgment, which can differ from the factual circumstances at the time of the trademark application. The applicant bears the risk of such changes.

The court has clearly stated that foreign judgments are not binding and that the Swiss authorities must examine the question of original distinctiveness independently. In this case, several foreign instances have decided in favour of Louboutin, but the Swiss court was not open to the arguments that the red-sole trademark is internationally known and that the relevant consumers across the world share the same understanding of a red sole constituting a trademark.

For further information on this topic please contact Mathis Berger at Nater Dallafior Rechtsanwälte by telephone (+41 44 250 45 30) or email (berger@naterdallafior.ch). The Nater Dallafior Rechtsanwälte website can be accessed at www.naterdallafior.ch.

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