Louboutin's Red Sole: How Courts in New York and Luxembourg Treated a Colour Mark

By Imaduddin

Photo: pratikshawave / Pixabay

Christian Louboutin began painting the soles of his high heels red in the early 1990s. Over time the red sole became one of the best-known signatures in fashion, and the company set out to protect it as a trademark. That effort produced two landmark rulings, one in the United States and one in the European Union, which still shape how courts treat colour as a brand.

New York: Louboutin v Yves Saint Laurent

In 2011 Louboutin sued Yves Saint Laurent over a line of shoes that were red all over, including the sole. A federal judge in New York refused a preliminary injunction and suggested that a single colour could not be a trademark in the fashion business.

The US Court of Appeals for the Second Circuit disagreed with that reasoning. In its decision of 5 September 2012, the court held that the red sole had acquired secondary meaning as a mark of Louboutin, so it deserved protection, but only where the red sole contrasts with the rest of the shoe. The court ordered the registration to be narrowed accordingly. Because YSL's shoes were red from top to bottom, the sole did not stand out, and the court found that YSL's monochrome shoes did not use Louboutin's mark as defined. Both sides could therefore claim part of a win.

Luxembourg: Louboutin v Van Haren

The European case began in the Netherlands, where Louboutin sued the Dutch shoe retailer Van Haren over red-soled shoes. Van Haren argued that Louboutin's Benelux registration was invalid because it consisted of a shape that gives substantial value to the goods, a ground that EU trademark law treats as an absolute bar.

On 12 June 2018, the Court of Justice of the European Union ruled in Case C-163/16 that the mark was not a shape mark of that kind. The court said the registration claimed a specific red colour applied to the sole of a high-heeled shoe. The outline of the shoe in the filing only showed where the colour was placed and was not itself what was protected. A sign of that kind, the court held, does not consist "exclusively" of a shape, so the shape exclusion did not apply. The case then returned to the Dutch courts.

Why the red sole matters

Together, the two rulings show that a colour placed in a fixed position on a product can work as a trademark, as long as the public recognises it as a sign of origin and the colour is not just the shape of the product in disguise. They also show the limits. In the US, protection depended on contrast, and in the EU the outcome turned on how the mark was described in the registration.

The Indonesian angle

Under Article 1(1) of Law No. 20 of 2016 on Marks and Geographical Indications, a mark can consist of, among other things, an arrangement of colours (susunan warna) in two or three dimensions. In practice, a single colour applied to part of a product faces a high bar for distinctiveness at the DJKI, and applicants should be ready to show evidence that consumers see the colour as a brand. We are not aware of an Indonesian court decision on a position or colour mark comparable to the Louboutin cases.

Sources

• Court of Justice of the European Union, judgment of 12 June 2018, Christian Louboutin v Van Haren Schoenen, Case C-163/16 (EUR-Lex)
• US Court of Appeals for the Second Circuit, Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., No. 11-3303 (5 September 2012) (Justia)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)