The Swiss Supreme Court has rejected an appeal by French fashion house Christian Louboutin filed against a refusal of registration of the fashion house's signature red sole position trade mark for "high heeled ladies shoes" in Class 25 on the basis of non-distinctiveness. The court found that the red sole would be seen as a commonplace aesthetic stylistic element for high heeled ladies' shoes and not as indication of trade origin. Christian Louboutin vs IGE, Decision of the Swiss Supreme Court (Bundesgericht), Case 4A_363/2016 of 7 February 2017

The case

Christian Louboutin had filed for an International trademark for the color red (Pantone No. 18.1663TP) "ladies footwear sole (position mark)" covering "ladies footwear" in Class 25 and designating, among others, Switzerland.

Despite a specification restriction to high heeled shoes ("ladies high heeled footwear") in Class 25 the Swiss IPO and Swiss Administrative Court regarded the sign as inherently non-distinctive and refused protection for Switzerland. An attempt by Christian Louboutin to prove that the trade mark had acquired distinctiveness did not succeed since the evidence filed was deemed insufficient and Louboutin subsequently dropped this claim.

Upon further appeal, the Swiss Supreme Court confirmed the refusal due to a lack of distinctiveness. Based on existing precedents, the court defined a position trademark as a sign that is always placed in the same position on a product. Since both, the sign and its positioning on the product, were of importance, it was crucial to analyze the strength of that positioning combined with the distinctive 2 character of the sign itself when determining whether the relevant consumers would interpret "the sign as placed on the product" as an indication of trade origin. Compared to a word or device element positioned on a shoe sole, however, coloring the sole in a specific and abstract color was commonplace and descriptive. It would usually not be interpreted as an indication of trade origin but seen as a merely decorative and aesthetic stylistic element, which even the relevant consumers considered by Christian Louboutin, namely "affluent fashionconscious females between the ages of 20 and 60 years old" would not regard as a sufficient departure from the usual fashion design elements of a high heeled shoe.

Comment

The Swiss Supreme Court's decision provides helpful guidance as to when a position mark may function as an indication of trade origin and thus be registrable as a trademark in Switzerland. It also serves as a reminder of the territoriality of trademark laws, notably since other European courts, such as those in neighbouring Germany, had taken a different approach when assessing the distinctiveness and registrability of Louboutin's red sole mark. The case also reminds us that Swiss practice is strict when it comes to distinctiveness. Fashion designers in particular should therefore keep an open mind and adopt a flexible approach when devising their global brand protection strategies by analyzing the tactically appropriate protection for each relevant marke