Red soles are the bone of contention in proceedings launched in the US courts by high end shoe brand Christian Louboutin against Gucci-owned Yves St Laurent. Judith Gordon reports on the IP issues and whether it could happen in the UK.
Topic: Intellectual Property
Who: Christian Louboutin SA v. Yves Saint Laurent America Inc
When: April 2011
Where: U.S. District Court, Southern District of New York
Law stated as at: 28 April 2011
Famous shoe designer Christian Louboutin ("Louboutin") is suing rival luxury fashion brand Yves St Laurent ("YSL") after YSL included in their Spring collection a number of red-soled shoes, a well-known trade mark of Louboutin footwear.
The suit was filed in the US District Court of New York (Manhattan) on 7 April, claiming that YSL had infringed Louboutin's trade mark with their red-soled shoes being "virtually identical" to Louboutin's mark and likely to cause "confusion, mistake and deception among the relevant purchasing public". Louboutin further claimed that the infringement had impaired its "ability to control their reputation" and sought an injunction against the sale of the shoes as well as damages of at least $1 million.
Though YSL have refused to comment on the case to date, it is alleged that they refused to stop selling the controversial shoe when asked by Louboutin back in January of this year.
Louboutin trademarked the red sole in 2008 at the US Patent and Trademark Office, having built up instant brand recognition and a cult celebrity following over the years.
Could Louboutin have a case in the UK?
Louboutin has similarly registered the red sole as a trade mark in the UK. The description of the mark states that it consists of "the colour red (Pantone No. 18.1663TP) applied to the sole of the shoe", with further reference to a diagram clearly showing the positioning of the colouring on a stiletto shoe.
The UK mark was registered in April 2009 against ladies footwear in class 25, and notes the special circumstances of its registration as "proceeding because of distinctiveness acquired through use" (therefore implying that the registration would not otherwise have succeeded were it not for the established distinctiveness of Louboutin's red soled shoes).
Under section 10 of the Trade Marks Act 1994 ("TMA"), for Louboutin to prove infringement of the trade mark in the UK, they would have to show either that
i) the infringer's red sole is identical to their trademarked red sole and is used on identical goods (i.e. ladies footwear) – section 10(1); or
ii) the infringer's red sole is identical to their trademarked red sole and is used on goods similar to ladies footwear and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark – section 10((2)(a); or
iii) the infringer's red sole is similar to their trademarked red sole and is used on goods identical or similar to ladies footwear and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark – section 10(2)(b); or
iv) the infringer's red sole is identical or similar to their trademarked red sole, the use of which being without cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of Louboutin's trade mark (Louboutin's trademarked red sole having a reputation in the UK) – section 10(3).
Looking at each of the above 4 limbs, it would appear possible that Louboutin could bring a fairly strong claim in the UK if Yves St Laurent were selling the problematic footwear on this side of the pond. . Whilst one could presumably argue that the marks are not identical under either limbs i) or ii) (assuming it unlikely that YSL have used the exact same shade of red as specified by Louboutin in their registration), there is unlikely to be any doubt that the mark is similar to Louboutin's mark and therefore a claim under either limbs iii) or iv) is possible.
Infringement under section 10(2)(b) TMA
When proving infringement under section 10(2)(b) TMA, there must be "a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark". When interpreting whether this has been met, the courts are to take into account all factors relevant to the circumstances of the case, perceiving the mark as a whole (i.e. as the average consumer would).
Though red soles are undoubtedly associated with the Louboutin brand, whether there is a likelihood of confusion on the part of the public is questionable given the high end of fashion in which the brand operates. For example, YSL would no doubt argue that when spending hundreds or even thousands of pounds on footwear, people are unlikely to be confused as to which brand of shoes they are buying.
However Louboutin could counter this by relying on the doctrine of 'initial interest confusion', which states that a finding of confusion need not be restricted to the point of sale and can be found to exist at any particular point in the process of selecting and purchasing goods. Therefore were consumers to initially believe that YSL's shoes were Louboutins, only to later have this confusion corrected, the correction (and indeed whether they actually went on to purchase the goods) would be irrelevant, and a likelihood of confusion could still be said to exist. The rationale behind this being that even once such confusion has been dispelled, damage to the trade mark proprietor (i.e. Louboutin) can still occur, such as through erosion of the distinctiveness of the mark.
Therefore given their strong brand recognition on account of their red soles, it would appear that Louboutin would have a strong case for this type of infringement.
Infringement under section 10(3) TMA
Louboutin could also bring a claim under s10(3) TMA, arguing that YSL's shoes take unfair advantage of or are detrimental to, the distinctive character or repute of their red sole trade mark.
Here Louboutin would have to prove i) that one of three types of injury to their mark is present (such as that YSL's use dilutes the distinctiveness of Louboutin's mark or that YSL are attempting to 'ride on the coat-tails' of Louboutin's well-known mark) and ii) that 'the relevant section of the public' (i.e. those interested in buying such shoes) had made a connection between the alleged infringing mark and the original Louboutin mark (note that there is no requirement to prove a likelihood of confusion however). Therefore where a mark has a particularly distinctive character and strong reputation (as the Louboutin mark arguably does), infringement under this head should not be particularly difficult to prove.
As per when interpreting the likelihood of confusion under s10(2)(b) however, the court must take into account all factors relevant to the circumstances of the case and so there is still room for YSL to put forward other elements of the alleged infringement which act in their favour. For example, many commentators have noted that the offending YSL shoes are red in their entirety with red soles, and that green shoes with green soles and purple shoes with purple soles are also being sold within the same range. YSL could therefore argue that the purpose of the red sole is to complement the rest of the shoe, rather than to exploit Louboutin's trade mark in anyway. Whether this would be enough to counter the unfair advantage over, or detriment to, Louboutin's trade mark is unknown however.
A challenge to the validity of Louboutin's trade mark?
Given the likely strength of any of the above claims, Louboutin's main concern might perhaps be whether YSL would challenge the validity of Louboutin's trade mark, leaving a claim under any of the above heads of the TMA irrelevant (though undoubtedly a passing-off claim would still be an option).
For example, although it would be an uphill struggle given the clear view taken on the issue by the Registry at time of registration of the Louboutin mark, YSL might argue that Louboutin's red soles should never have been registered as a trade mark in the first place as they are devoid of any distinctive character, or because the use of coloured soles is an established practice of the shoe-making trade.
Consistent with this, the week after filing the suit against YSL, Louboutin also launched proceedings against Brazilian shoes and accessories label, Carmen Steffens, who claim in their defence to have used coloured soles across their shoes for many years, before Louboutin registered the mark.
Alternatively, YSL could challenge the validity of the trade mark on grounds of public policy, arguing that such a trade mark should not have been allowed to be registered in the first place, as it stifles creativity and design within the industry. For example, much US commentary on the lawsuit has questioned whether a designer should be able to trade mark a colour in the first place.
Whilst it is long established in UK and EU law that a colour can be trademarked (for example BP's protection of its green petrol stations), colour protection within the fashion industry is far more controversial. Trends are born in the fashion industry through designers featuring similar elements of each others collections and so it could well be argued that such trade marks do not belong in the industry.
Why this matters:
Though a case has not been brought in the UK and the above remains a purely speculative analysis, the US lawsuit has the potential to raise some interesting intellectual property issues of interest to parties on both sides of the pond: Should designers be entitled to a monopoly over a colour? If so, is such a trade mark appropriate protection in the context of the fashion industry? Can such trade marks operate effectively in protecting brand recognition? Do they stifle the natural evolution of the fashion industry?
In a broader context, Louboutin's claim further demonstrates that even where registration of a trade mark is successful, enforcing it further down the line is not always straightforward, and questions may later be raised as to the validity of the mark's registration.
Should Louboutin's lawsuit proceed any further in the US courts with a discussion of the above issues, the outcome of the case will no doubt be eagerly anticipated by both fashionistas and intellectual property lawyers alike.