Louboutin wins YSL battle to trademark red soles

An appeal court in the US overturned a previous decision by a federal judge that effectively ruled the fashion industry had special status and could not trademark colours.

Christian Louboutin's luxury shoes are worn by stars such as Sarah Jessica Parker and Halle Berry.

The federal appeals court decision comes after Louboutin sued Yves Saint Laurent (YSL) in April 2001 after the latter announced plans to introduce a monochrome line of women's shoes that would have the red colour throughout.

The case was referred to the appeals court after a New York federal judge originally ruled against Louboutin’s attempts to prevent Yves Saint Laurent from selling a China Red shoe with the same shade of sole.

However, the US appeal court ruled Louboutin had exclusive rights to red soles if they contrasted with the rest of the shoe because the brand is synonymous with red soles.

The summary of the appeal court ruling stated: "We hold that the District Court's conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error.

"We further hold that the District Court’s holding, that Louboutin’s trademark has developed 'secondary meaning' in the public eye, was firmly rooted in the evidence of record and was not clearly erroneous, and that the Red Sole Mark is therefore a valid and enforceable trademark."

The case has now been referred back to the district court and is likely to have repercussions for the global fashion industry.

Trademark attorney firm Harrison Goddard Foote registered a trademark on behalf of Louboutin for the China Red sole in the UK on 15 November 2007, effectively meaning Louboutin could bring action against any rivals attempting to bring out red sole shoes in the UK.

Lee Curtis and Rebecca Tilbury, trade mark attorneys at Harrison Goddard Foote, who have been jointly following the case, believe the case proves it is possible for a brand to monopolise a colour through consistent use.

They stated: "I think one can view this as a major victory for Christian Louboutin as it effectively means he can monopolise the red sole of women’s shoes, what he argued all along. When one says to anyone in the street 'red sole of women's shoes' they usually respond Christian Louboutin and thus in law he can now monopolise this colour.

"Christian Louboutin has achieved this monopoly through consistent and prominent use of the colour over many years and has educated the public to see the colour as his 'brand'."

The US court ruling is not legally binding in other markets but Curtis argues that because matters of principle in the US and UK law are similar the principles of what the appeal judge said could be applied in the UK.

The original US lower court decision implied the fashion industry should be exempt from the monopolising of colours, but brands from other sectors had taken steps to monopolise colours.

Curtis cites Cadbury’s use of a shade of purple for its chocolate and BP protecting the green it uses for its petrol stations as examples.

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This article was first published on marketingmagazine.co.uk