“In 1992 I incorporated the red sole into the design of my shoes. This happened by accident as I felt that the shoes lacked energy so I applied red nail polish to the sole of a shoe. This was such a success that it became a permanent fixture.”
- Christian Louboutin
In April this year, Christian Louboutin filed a lawsuit against Yves Saint Laurent for alleged trademark infringement.
The designer claimed that in YSL’s 2011 Resort Collection (right), the French fashion house duplicated Louboutin’s most iconic design feature – the red sole. Louboutin sought for the shoe in question to be withheld from the market and one million dollars in damages.
The injunction stated that;
“Mr Louboutin is the first designer to develop the idea of having red soles on women’s shoes. The location of the bright colour on the outsole of a woman’s pump is said to provide an alluring “flash of red” when a woman walks down the street, or on the red carpet of a special event.”
This week, Judge Victor Marrero of Manhattan, ruled against Christian Louboutin’s plea for an injunction against the shoes inYSL’s 2011 Resort Collection. In his ruling, Judge Marrero recorded;
“Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that 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.”
Christian Louboutin’s lawyer, Harley Lewin of McCarter & English LLP, released the following statement;
“We are profoundly disappointed in Judge Marrero’s decision. Although we are still studying it, it appears he has decided that in the fashion industry, one color should not serve as a trademark. While he acknowledges the fashion industry at large has recognized the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colors on outsoles without restriction and this, despite a mountain of evidence to the contrary, including a recent decision by the 2nd Panel of Appeal at OAMI in the EU that concluded exactly the opposite, calling Mr. Louboutin’s adoption of the bright red outsole brilliant. We will evaluate all the alternatives available in the days to come.”
In comparison, David Bernstein of Debevoise & Plimpton LLP, YSL’s lawyer has stated;
“We’re gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolize a single color for an article of apparel. As Judge Marrero indicated, YSL designers are artists and, like other artists, they should have the right to use the full palette of colors in designing their fashions for each season.
As YSL has noted from the start, this is a trademark registration that never should have issued, and we are pleased that Judge Marrero has agreed that the registration likely should be cancelled.”
Although Yves Saint Laurent are thrilled with Judge Marrero’s decision, it appears that Christian Louboutin’s team will explore different avenues until the result they seek is achieved.
