Is LOUBOUTIN’S RED SOLE TRADEMARK INVALID?

Putting an end to the trademark lawsuit between Christian Louboutin and Zara, French Supreme Court have invalidated Louboutin’s red sole trademark for lack of distinctiveness. French Supreme Court upheld the Paris Court of Appeal’s decision of invalidating Louboutin’s trademark.

French trademark law prohibits the unauthorized use by reproduction or imitation of a protected trademark to designate certain products or services. In particular, Articles L.713-2 and L.713-3 of the Intellectual Property Code provide that one shall not, without the consent of the trademark owner:

· Reproduce a trademark to designate similar products or services, if this is likely to create a risk of confusion in the public’s mind.

·  Imitate a trademark to designate identical or similar products or services, if this is likely to create a risk of confusion in the public’s mind.

CASE FACTS

· Louboutin registered a word and figurative trademark representing the “red sole of a shoe” with the World Intellectual Property Organization in 2001, under priority of a French trademark of November 2000, designating shoes in Class 25.

· When Zara France launched a collection of women’s shoes having red soles then Louboutin filed a case of trademark infringement and unfair trade against Zara.

· Zara’s representatives counter-claimed that Louboutin’s trademark was invalid.

· The Paris Court of First Instance had rejected the lawsuit saying that there was no chance of confusion between two products of different companies.

·But, the court also said that by using red soles, Zara had unduly sought to benefit from Louboutin’s investments and thus, ordered Zara to pay damages to the designer.

· When this case was sent to the Paris Court of Appeal, it overturned lower court’s decision, and it ruled out that Louboutin’s trademark was invalid due to lack of distinctiveness; thus, there was no trademark infringement.

·The Paris Court of Appeal also rejected Louboutin’s unfair competition claims, stating that Louboutin could not claim a monopoly on the concept of red soles on women’s shoes.

SUPREME COURT FINDINGS AND DECISIONS

·  Louboutin further appealed in the Supreme Court who upheld the Paris Court of Appeal’s decision.

· The Supreme Court stated that the reputation of Louboutin’s iconic red shoe soles related merely to a concept, rather than to the trademark.

· It also found out that Louboutin’s trademark indeed lacked distinctiveness and acknowledged to the appeal that it has considered following facts:

§  Louboutin’s trademark was defined as a two-dimensional shape; however, it should have been a three-dimensional shape.

§  It could not be determined whether Louboutin’s trademark represented the external or internal face of a sole.

§  If Louboutin’s trademark could be identified as a sole, its shape appeared to be imposed by its nature or function.

§  The claimed red color was not defined by a Pantone reference, which would have enabled it to be precisely identified. The representation also consisted of several shades of red.

§  The reputation of Louboutin’s red shoe soles related to a mere concept, rather than to the trademark.

·         The Supreme Court thus invalidated Louboutin’s trademark and dismissed the claims.

CONCLUSION

It’s a good decision by the French Supreme Court. French court stated in the decision that it was just a concept when Louboutin used it first and trademark protection should not be given to concepts which are too obvious (my view). This case also brings to end the color trademark infringement case because red sole was not specified by Pantone scheme. In the end, I just state that it was a very good decision and Zara will be too happy with this and now let us all go shopping.