Over the past couple years, Christian Louboutin has been fiercely protecting its signature red soles all over the world, because it has built this brand image of luxury, wealth, and glamour based on the simplicity of beautiful 4 inch red-soled heel.
In September 2012, Louboutin won a significant battle in its trademark infringement suit against Yves Saint Laurent, where the Second Circuit upheld Louboutin’s trademark of the red sole only where the sole is contrasting in color to the upper portion of the heel, meaning that Louboutin has a trademark over heels with red soles where the shoe itself is not also red.
However, last week in a Brussels District Court, a judge held that Louboutin’s trademark of the red sole was not valid in a region called Benelux, which covers Belgium, Netherlands, and Luxembourg. The court held this decision in a case brought by Louboutin against Van Dalen Footwear BV for trademark infringement. Van Dalen countersued for invalidity of the mark, and has won.
In her ruling, Judge Natalie Swalens decided that rather than the trademark being a color mark, it is a shape mark because a consumer views the red sole in context of the entire shoe rather than just the sole, and the red sole gives substantial value to the shoes because it is a major marketing point for selling the shoes to the consumers. Therefore, under European law which prohibits the trademark of a shape mark that adds substantial value to the product. This provision exists so that a company can’t monopolize a technical, functional or aesthetic quality.
The judge also stated that the trademark isn’t distinctive because red-soled shoes are common in the market; therefore, the red soles don’t indicate that they are Louboutin. As such, the court held that Louboutin’s trademark is invalid and dismissed its suit against Van Dalen. This means that in the three countries of Belgium, Netherlands and Luxembourg, companies can adopt the red soles on their own shoes.
This is a huge hit against Louboutin who has basically built the brand on the red-soled heel and has gone to great lengths to protect the red sole, by seeking trademarks globally and also pursuing legal action for any infringement on a global scale as well. The brand has built an aura of luxury and exclusivity based on the red-sole of his heels. If Louboutin is unable to protect this, other companies can capitalize and profit off of the consumers’ desire to have red soles.
It will be interesting to see how this ruling affects the market of footwear in these three regions and more importantly in Europe as a whole. Will other European countries follow suit and declare Louboutin’s trademark invalid? If so, it could severely affect Louboutin’s brand image and brand awareness. Because of Louboutin’s fierce protection of his brand image, I’m sure there will be an appeal.
source: “Belgian Court Invalidates Louboutin Red Sole Trademark,” law360.com