In the July 2011 issue of the Australian Intellectual Property Law Bulletin, we published an article on the litigation in the United States launched by Christian Louboutin to prevent Yves Saint Laurent (YSL) from marketing a particular design of a shoe with a red sole.1
Louboutin has registered the colour red applied to the soles of shoes, both in the United States and in several other jurisdictions.2
As the US District Court at first instance later colourfully noted, "a flash of a red sole is today instantly recognizable, to those in the know, as Louboutin's handiwork".3 Surprisingly, however, the court cast doubt on the essential validity and enforceability of the Louboutin trade mark.
The Goliath v Goliath battle between the two fashion houses cumulated in a decision of the US Court of Appeals handed down on 5 September 2012.4
If this matter had come before the Australian courts, under the Trade Marks Act 1995 (Cth), a trade mark for red-soled shoes would not grant Louboutin a monopoly over all instances of red applied to the soles of a shoe.5 In particular, YSL or any other trader would only be caught for trade mark infringement if it were using the red sole as a trade mark (as opposed to using it for aesthetic purposes).
In the US, the Lanham Act does not contain the equivalent of our "use of a mark as a trade mark" component in its test for trade mark infringement. The US test involves two stages: first, whether the trade mark itself "merits protection"; and, second, whether the alleged infringing mark is likely to cause consumer confusion, making a comparison with Australian trade mark law difficult.
At the first instance, the US District Court in August 2011 held that Louboutin's motion for a preliminary injunction did not show a likelihood of success on its merits. The basis for the court's finding was that single colours in the fashion industry are inherently functional and can never be trademarked. The result was that Louboutin's trade mark was unenforceable. Louboutin appealed.
The Court of Appeals on 5 September 2012 restored balance in the jurisprudence of colour marks, quoting an earlier decision of the US Supreme Court that "no special legal rule prevents color alone from serving as a trade mark".6 The Court of Appeals held that the same principle extends to the fashion industry and that there was no reason why a single colour could not acquire "secondary meaning" over time.
However, in examining the merits of Louboutin's trade mark, the Court of Appeals considered that the evidence showed that secondary meaning of the mark extends only to uses where the red lacquered outsole "pops" or is contrasted with the rest of the shoe.
YSL's shoe in question is a monochromatic red shoe with a red sole. As the extent of Louboutin's mark was limited to shoes where the red sole contrasted with the upper of the shoe, there was no need to consider the second limb of the infringement test.
Both parties announced the decision as a victory, though one suspects that included in the upcoming season of "Louboutins" may be a range of red shoes with red soles. So last season!
This article was first published in the Australian Intellectual Property Law Bulletin, October 2012 Vol 25 Issue 5