Christian Louboutin painted the world red with his infamous red-soled shoes and single-handedly elevated it to a status symbol. The red sole which was inspired by a girl painting her nails red in 1996, led to a footwear fashion revolution. By the year 2010, the company was selling over 600,000 shoes per year all bearing the same Pantone 18-1663 TPX “Chinese red”-hued soles.
This begot brand exclusivity and continuous efforts on the part of Louboutin’s legal counsel to ensure that the red sole is protected and kept exclusive to the luxury brand. The brand has been maintaining a federal trademark registration of the said ‘red sole’ since January 2008.
However, maintaining the single-colour trademark proved to be a battle for Louboutin’s team time and again, especially with the red sole’s growing global influence.
In 2011, the team led a battle against another well-known luxury brand Yves Saint Laurent for adding the infamous red sole to its collection in its spring/summer collection. As the team for Louboutin filed a suit for the infringement of its trademark claiming an unfair advantage which was made available to YSL due to Louboutin’s established goodwill and brand recognition, as well as severe impairment of its own ability to control the quality, reputation and distribution of its products, it’s rival YSL claimed Louboutin’s single colour mark to be invalid in light of restrictive of competition and creativity.
Accordingly, Louboutin sought a preliminary injunction against the sale of the YSL collection as well as the complete removal of its rivals’ products from the market.
The battle which carried on for two years in the New York federal court had both the rivals teaming up with varied allies each to support its own claim. Accordingly, the counsel for Tiffany & Co. sent over its own brief siding with Louboutin’s claim over the red sole, meanwhile, in hindsight, it protected its own claim over the robin’s egg blue.
In a much-awaited decision in September 2012, Louboutin was declared victorious and its claim over the red sole once again re-enforced. In 2013 however, the sweeping “lacquered red sole on footwear” on an order from the Second circuit was changed to “a red lacquered outsole on footwear that contrasts with the colour of the adjoining (‘upper’) portion of the shoe.”
Louboutin registered its trademark across the globe to ensure the exclusivity of the much sought-after red sole and naturally was met with resistance making this entire quest highly time-consuming and resource-intensive.
Currently, the Louboutin trademark stands upheld by a series of important decisions, including ones from the Paris Court of Appeal, the Court of Justice for the European Union, the Hanseatic Court of Appeals in Germany, the Beijing High Court, and the European Union Intellectual Property Office, among others.
In 2018, the European Court of Justice passed a judgement in the case of Christian Louboutin versus Van Haren Schoenen BV with respect to the Trademark Directives 2008/95, particularly whether the application of the colour red to the sole of the shoes to be deemed as a shape as per Article 3(1)(e)(iii) of Directive 2008/95.
“Article 3 of the Trade Mark Directive 2008/95, entitled ‘Grounds for refusal or invalidity, provides:
1. The following shall not be registered or, if registered, shall be liable to be declared invalid: …
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;”
The Court was of the opinion that despite the shape creating an outline for the colour to be applied to the sole, it could not be claimed that the mark claimed by the brand consisted of a shape especially when the description of the mark clearly stated the rights merely over the colour and nothing with regards to the shape of the shoe. As a result, the Court held single colour trademarks as valid and very much applicable.
Christian Louboutin had been enjoying the single colour trademark registration in India since 2015, however, in 2017 this was questioned in the case of Christian Louboutin versus Abubaker & Ors. The contention raised against the brand’s registration was with respect to Section 2 of the Trademarks Act, 1999.
“Section 2 (1)(m) Trademarks Act, 1999: mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
Section 2 (1)(zb) Trademarks Act, 1999: trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours; and–”
The reasoning is that the Act did not mention or provide for single-colour trademarks; hence, Louboutin should not be allowed to claim a trademark over a single colour. However, these claims were rejected as the clauses were deemed to be inclusive and not exhaustive in nature.
The contentions against Louboutin’s claim over the red sole, however, were finally put to stop by the Draft Manual issued by the trademark office in 2015. The device not only provided for single-colour trademarks but also other unconventional marks such as the UK practice of basing a graphical representation of colour marks along with a written description of the colours based on a worldly recognised identification of colours system such as the ‘Pantone’ system of colours for the purpose of registration of trademarks. Furthermore, the contentions based on the unilateral and aesthetic functionality against the red sole trademark have also been proven to be invalid.
In the global quest for the recognition of the red sole trademark, Louboutin however seems to have come across an unconquerable island i.e. Japan.
For the past seven years, Louboutin has been trying to get its red sole (or single-colour trademark) registered and recognised by the Japan Patent Office as they have time and again rejected their application on the grounds of lack of inherent and acquired distinctiveness.
The Patent Office was of the opinion that the colour red has been known to be used in the footwear industry for its aesthetic appeal quite commonly and even before Christian Louboutin in 1996 hence having no reason for it to be recognised as a trademark.
As Louboutin filed for an appeal in front of the Board and tried to prove its brand distinctiveness and awareness with the help of the survey the interpretation of its result did not favour the brand, as more than half of the subjects could not correlate the red sole with Louboutin. Therefore, on June 7 2022 the Appeal Board of Japan once again rejected Louboutins claim over the red sole.
The Appeal Board was of the opinion that a single-colour trademark especially the red in shoes is not something new and further only acts to restrict competition. Since the buyers in Japan are yet to recognise the french luxury brand as the rightful bearer of the red sole, without any wordmark, the trademark cannot be registered.
Even though the Japanese trademark law underwent some amendments introducing more unconventional marks including colour and sound marks, the authorities still refuse to recognise single-colour trademarks given the trend rate of success of colour registrations has been relatively small and comes with the pretext of hefty investment and bigger corporations.
The saga of the red sole trademark has been nothing short of an interesting journey and perhaps there is more to come, on the next page.
