A New York court has refused to rule that red soled shoes are exclusively the domain of French designer Christian Louboutin.
Louboutin has trademarked red-soled shoes in a number of jurisdictions, including the United States. As part of its 2011 spring-summer collection, Yves Saint Laurent (“YSL”) released shoes entirely of one colour. In the case of YSL’s red shoe, the sole is also red.
Louboutin commenced proceedings in April 2011 against YSL alleging, inter alia,:
- trademark infringement and counterfeiting;
- trademark dilution;
- false designation of origin and unfair competition; and
- unlawful deceptive acts and practices.
Louboutin also sought a preliminary injunction to stop YSL from producing red-soled shoes during the pendency of the action.
To succeed in Australia Louboutin would have to prove:
- that YSL is using the red sole as a trade mark. Here, the offending YSL shoes are completely red to give the shoe an overall or continuous red-coloured look. Arguably, the red sole is part of the design aesthetic and is not being used by YSL as a badge of origin to connect the shoes with YSL. In addition, YSL has previously released shoes with coloured soles. In 2008 YSL released blue heels with a matching blue sole. This may help substantiate an argument that the red sole is being used by YSL as a design element rather than as a mark;
- that the YSL mark is substantially identical or deceptively similar to Louboutin’s registered mark. Some noticeable differences include that the red sole on the YSL shoe is a matte finish and unlike the Louboutin shoe is not lacquered or glazed. Also, the YSL shoe is completely red whereas the Louboutin design features only a red sole;
- that the red-soled YSL shoes falsely misrepresent to reasonable persons that they are Louboutins.
The New York judge concluded that Louboutin had not established a likelihood that it would succeed on its claims that YSL infringed the red sole trademark to warrant a preliminary injunction. The judge noted that “because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition… Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection.”