Louboutin’s Red Soles - The first verdict is here!

Yves Saint Laurent may still sell his red-soled shoes.

As we had reported before on LexDellmeier’s „Not just another IP-Blog“, the famous luxury shoe brand Christian Louboutin had sued the just as famous luxury fashion brand Yves Saint Laurent for damages because of an infringement of Christian Louboutin’s trademark right of the Red Sole. With a preliminary injunction they wanted to stop Yves Saint Laurent from selling the shoes that featured a red sole.

The New York court has now decided in this preliminary injunction procedure in favor of Yves Saint Laurent finding that they can still sell their shoes.

Federal judge Victor Marrero stated: „Because in the fashion industry colour 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.“ German Press reported that in spite of describing the glamorous effect of Louboutin’s Red Soles with nearly poetic words he did not see a right for the brand to exclude other shoe designers from using this element because there were “different reasons why they would do so”.

Until now it is difficult to evaluate what consequences this decision might have on the trademark rights of Christian Louboutin regarding the Red Sole. It has to be seen what will be decided in the main proceeding and on what grounds the decision will be based.

From a European perspective we find it particularly interesting if this decision really means a turning point in trademark law or if the findings of it will have mainly an inter partes importance considering that it regards to competitors with an equal reputation.

Even though the press coverage throughout the world gave the impression that Louboutin’s trademark right was gone and from now on everybody could use red soles, it still has to be seen if this verdict will open the doors to the use of red soles for every shoe designer. Especially producers of cheap no name copies who evidently try to exploit the fame of the luxury brand by copying their look might not get the same result in court proceeding as Yves Saint Laurent did, who on the contrary has no interest in looking like Louboutin and surely needs no limelight of others.

According to our opinion, there is also a great difference between simply pimping up a pair of no-name shoes by adding a red sole, as it happens so often on street markets or online auctions, and creating a sophisticated collection of uni-colored shoes in different colors (not only red), where the sole matches the color of the upper leather, as it was the case with Yves Saint Laurent. In the first case, an infringement seems very likely in second one, the red sole is maybe a mere decorative element with no reference to another trademark.

However, currently and according to our information, Christian Louboutin does have trademark protection for the "red sole" in place in various juristictions around the world. The first verdict from the US does not mean that other countries will automatically have the same opinion.

We are curious how this case keeps developing - and will keep you posted: To be continued…….