The Supreme Court has cancelled Christian Louboutin's trademark - representing a red sole - for lack of distinctiveness. It stated that the reputation of Louboutin's iconic red shoe soles related merely to a concept, rather than to the trademark.

Louboutin, a well-known designer of luxury shoes, registered a word and figurative trademark representing the "red sole of a shoe" with the World Intellectual Property Organisation in 2001, under priority of a French trademark of November 2000, designating shoes in Class 25.

High-street retailer Zara France launched a collection of women's shoes featuring red soles, prompting Louboutin to initiate proceedings against the company, claiming trademark infringement and unfair competition. Zara's representatives counterclaimed the nullity of Louboutin's trademark.

The Paris Court of First Instance rejected both Zara's claim of the invalidity of Louboutin's trademark and Louboutin's claim of trademark infringement, holding that there was no likelihood of confusion between the products of the two companies. However, it found that by featuring red soles, Zara had unduly sought to benefit from Louboutin's investments and ordered it to pay damages to the designer.

The Paris Court of Appeal overturned this decision, ruling that Louboutin's trademark was invalid due to lack of distinctiveness; therefore, no trademark infringement had occurred. It also rejected Louboutin's unfair competition claims, stating that Louboutin could not claim a monopoly on the concept of red soles on women's shoes.

On further appeal, the Supreme Court upheld the Paris Court of Appeal's decision.(1)

The Supreme Court found that Louboutin's trademark indeed lacked distinctiveness. It acknowledged that the court of appeal had duly considered the following:

  • Louboutin's trademark was defined as a two-dimensional shape; however, it should have been a three-dimensional shape.
  • It could not be determined whether Louboutin's trademark represented the external or internal face of a sole.
  • If Louboutin's trademark could be identified as a sole, its shape appeared to be imposed by its nature or function.
  • The claimed red colour was not defined by a Pantone reference, which would have enabled it to be precisely identified. The representation also consisted of several shades of red.
  • The reputation of Louboutin's red shoe soles related to a mere concept, rather than to the trademark.

The Supreme Court thus invalidated Louboutin's trademark and dismissed the claims.

For further information on this topic please contact Camille Pecnard at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (camille.pecnard@hoganlovells.com).

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Endnotes

(1) Commercial Chamber, May 30 2012, Christian Louboutin v Zara France.