French Supreme Court, Commercial Chamber, Decision of 30 May 2012, Christian Louboutin v. Zara France
The French Supreme Court ruled that Christian Louboutin's trademark, representing a red sole, shall be cancelled for lack of distinctiveness. The reputation of Louboutin's red shoe soles rather relate to the concept than to the trademark.
Christian Louboutin, the well-known designer of luxury shoes, registered the word and figurative trademark representing a "red sole of a shoe" with WIPO in 2001, under priority of a French trademark of November 2000, designating "shoes" in class 25.
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Upon the sale of women's shoes with red soles by Zara France, Mr Louboutin and his company initiated proceedings against Zara France, claiming trademark infringement and unfair competition practice. Zara France's counterclaimed the nullity of Louboutin's trademark.
The Paris Court of First Instance rejected both Zara France's claim of invalidity of Louboutin's trademark and also Louboutin's claim of trademark infringement, holding that there was no likelihood of confusion between the trademark and the shoes. However, it found that Zara France, by using red soles, unduly benefited from Louboutin's investments and ordered Zara France to pay damages.
The Paris Court of Appeal overturned the decision, ruling that Louboutin's trademark was invalid for lack of distinctiveness so that there was no trademark infringement. It also rejected Louboutin's unfair competition claims, stating, in particular, that Louboutin could not claim a monopoly on the concept of having red soles on women's shoes.
Upon further appeal, the French Supreme Court confirmed the decision of the Court of Appeal of Paris.
The court found that Louboutin's trademark indeed lacked distinctiveness. It acknowledged that the Court of Appeal had duly considered that:
- Although Louboutin's trademark could be defined by a two-dimensional shape, as it was the case at issue, it should have been a three-dimensional shape.
- It could not be determined if Louboutin's trademark represented the external or internal face of the sole.
- If Louboutin's trademark could be identified as a sole, its shape appeared to be imposed by its nature or its function.
- The claimed red color was not defined by a reference, which would allow identifying it with precision. The representation also consisted of several shadings of red.
- The reputation of Louboutin' red shoe soles rather related to its concept than to the trademark.
The French Supreme Court concluded that Louboutin's trademark had to be declared invalid and dismissed Louboutin's claims.