In May, high-end French footwear designer Christian Louboutin suffered yet another loss in its ongoing legal battle over its iconic red-soled shoes. On May 30, 2012, the Cour de Cassation—the highest French court of appeals—determined there was no risk of consumer confusion between a red peep-toe platform heel with red soles sold by Spanish fashion retailer Zara and Louboutin’s own “Yo Yo” design, a nude peep-toe platform heel with his signature red soles. In denying Louboutin’s claims, the court found Louboutin’s French trademark specifications (the description of the mark) to be too vague, noting the absence of a specific Pantone color reference in the trademark. Further, in ruling against Louboutin, the court ordered him to pay approximately $3,600 in litigation costs to Zara France, pursuant to Article 700 of the Noveaue Code de Procedure Civile.

Designer Christian Louboutin testified that the idea for his red soles launched after he applied bright red nail polish to a pair of sky-high pumps he felt “lacked energy.” The effect was such a success that it became a permanent feature of Louboutin’s footwear designs. However, the red soles have also become a permanent feature of other parties’ shoe designs as well, causing Louboutin to spend millions of dollars each year seeking to protect its designs. Louboutin has served hundreds of Digital Millennium Copyright Act notices on Google to remove from its search results photos of its shoes on websites allegedly selling counterfeits. Louboutin has also set up a website dedicated to identifying the mounting number of fakes.

This most recent decision comes nearly a year after Louboutin suffered a similar loss in the Southern District of New York against designer Yves Saint Laurent (YSL). In that case, District Judge Victor Marrero denied Louboutin’s motion for a preliminary injunction seeking to enjoin YSL’s sales of four designs of red shoes with red soles and held that Louboutin was not legally entitled to corner the market on a color—notwithstanding the high-level of public recognition the red-soled shoes have gained. In his ruling, Judge Marrero distinguished earlier trademark disputes, wherein colors and/or patterns were wholly or partially intended to act as a source identifier; by contrast, the red color of Louboutin’s soles, by his own testimony, served a functional purpose, i.e. provided “energy,” rather than to identify a commercial source. Judge Marrero went even further, indicating a willingness to convert Louboutin’s motion for a preliminary injunction to a partial summary judgment motion canceling Louboutin’s trademark.

Yet, these two losses have not diminished Louboutin’s desire to protect the red soles. The Southern District of New York decision is currently on appeal to the Second Circuit Court of Appeals, and since the original decision in French court, Louboutin has re-filed his French trademark to include a highly specific shade of red—Pantone 18-1663TP. As Louboutin’s quest for protection continues, Venable will keep monitoring these cases.