Last week the French Court of Appeal ruled that Zara could continue to sell shoes with red soles without infringing Louboutin’s "Red Sole Trade Mark". Louboutin, famous for its red soled shoes, has engaged in an aggressive trade mark enforcement strategy in recent years, commencing proceedings against a range of fashion brands that have adopted the red sole look.
We blogged last year about Louboutin’s 2011 allegations that Yves Saint Laurent infringed the "Red Sole Trade Mark" by putting a red sole on a line of its red high heels. This case, launched in the US, is yet to be resolved. You can read more about the proceedings here and here.
In June 2011 Louboutin alleged that Zara had infringed its trade mark by releasing a pair of red soled peep toe shoes similar to Louboutin’s Yo Yo slingbacks (if you are not a "shoe person", check out the Daily Mail’s photo comparison here). Louboutin claimed that Zara was engaging in "counterfeiting and unfair competition". In response, Zara claimed that Louboutin’s trade mark was "too vague" to be valid and should therefore be deregistered.
Last week Zara was successful in the Court of Appeal which found that there was "no proven risk of confusion between the two brands of shoes. Adding insult to Louboutin’s injury, the Court also ruled that the French registration of the Red Sole Trade Mark should be cancelled on the basis that a trade mark for red soles was "too vague". Louboutin was ordered to pay 2,500 euros compensation to Zara.
Louboutin has recently amended some of its trade mark registrations to describe the sole colour as "Pantone 18-1663TP Chinese Red" rather than "red" in an apparent attempt to reduce the risk of a finding of invalidity.
Louboutin responded to the decision by reminding the world that the French judgment only concerned one French trade mark registration and did not have implications for the remainder of Louboutin’s trade mark portfolio. However, our investigations reveal that Louboutin’s trade marks in jurisdictions such as the US continue to rely on the general colour "red" to describe the mark, for example:
The color red is claimed as a feature of the mark. The color red appears in the design representing a stylized red sole
The mark consists of a lacquered red sole on footwear
Is Louboutin right to be so confident? Only time will tell.