‘The Red-Sole Saga Continues… Christian Louboutin heads back to Court’
by Maria Tsouvali
From catwalk to sidewalk, the name of Christian Louboutin is automatically linked in our minds with his famous red-sole shoes. The red-sole treatment was born more out of an accident than design. One afternoon, one of Louboutin’s assistants was painting her nails, when he grabbed her nail polish and painted a shoe-sole red. After that glimpse of inspiration, the red sole became his trade mark. For Louboutin, red means love, passion, blood and it is definitely his warehouse-symbol.
His designs have made his shoe-shaped gems iconic in the fashion industry and as a result the red sole has been protected as a trade mark in several countries. Litigation has nevertheless taken place in various disputes in which Louboutin claimed infringement of his rights. Generally litigation involved discussion over the validity and the scope of protection. One of the first cases to bring the red sole in front of the court was in the US. In 2011 Louboutin filed a claim for trade mark infringement against another well-known designer, Yves Saint Laurent.  The claimant was seeking revocation of the design as well as US$1 million in damages. The U.S District Judge Victor Marrero denied the firms request while he questioned the validity of the trade mark, writing:
‘Louboutin’s claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette’ […]’Louboutin is unlikely to be able to prove its red outsole brand is entitled to Trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning’.
In general the court observed that the law should not create restraints to creativity while granting a monopoly right to one designer by excluding the use of an ornamental or functional medium necessary for artistic expression. As a result District Judge Marrero denied Louboutin’s request for an injunction preventing YSL’s sale of the shoe.
However, the Appellate Court had a different view and overturned in part the above mentioned decision Circuit Judge Jose Cabranes stated that:
‘We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, “the primary significance” of which is “to identify the source of the product rather than the product itself.”
As an upshot, Louboutin retained his trade mark protection and the exclusive right to use the red colour on the bottom of its shoes, whenever the outer is any other colour besides red. 
There has been a recent referral to the European Court of Justice regarding the red-sole protection, this time from the Dutch court. Louboutin brought an infringement case against a Dutch shoe retailer, Van Haren Shoenen. In response to the claim, Van Haren counterclaimed that the trade mark which Louboutin relied on was invalid due to three reasons:
- It did not meet the strict criteria for registering, regarding colour marks and shape marks and therefore it lacked distinctive character.
- The colour red for shoe bottoms is no longer distinctive in the fashion industry, and
- The sign as registered consisted solely of a shape which gives substantial value to the goods which is contrary to Art. 2.1.2 of the Benelux Convention on Intellectual Property, in accordance with Art. 3(1)(e)(iii) of Directive 2008/95.
On the first two claims, the Dutch court confirmed the fact that the red-soles are highly distinguishable from other brands and perceived from the consumers as originating from Ch. Louboutin’s Firm. As far as the third claim is concerned, the court acknowledged the fact that the shoe is given substantial value because of the colour, but Art. 3(1)(3)(iii) of the Directive states that ‘signs which consist exclusively of the shape which gives substantial value to the goods’ should not be registered or if registered could be liable to be found invalid. It is obvious that the Directive does not mention colour.
Consequently, just recently, the Court of Hague referred for preliminary ruling to the European Court of Justice. The court asked if the concept of ‘form’ in the sense of Article 3(1)(e)(iii) of Directive 2008/95 is restricted to the three dimensional characteristics of the product (outlines, dimensions and volume thereof) or, does the concept of form also provide for other (non-three dimensional) properties of the product, such as colour. 
If the CJEU in answering the question, will find that the Louboutin trade mark is not covered by the shape element under the Article 3(1)(e)(iii) of the Directive, then Louboutin’s trade mark will still be valid and Van Harren will be found liable for trade mark infringement. Will our famous red-soles get protection once again? This is something that remains to be seen…
Assistant Editor QMJIP
 Seeing Red: A Critical Analysis of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. [notes], Alabama Law Review ,Vol65, Issue 2 (2013)
 Louboutin fights to keep red sole trademark”. CBS News (CBS). Associated Press. 12 August 2012. Archived from the original on 2012-04-03.
 Abraham, Tamara (15 August 2011). “Christian Louboutin to appeal after rival YSL wins right to sell shoes with red soles while court battle continues”. Daily Mail (London). Archived from the original on 2013-06-09.