This week I did my presentation on Christian Louboutin’s red lacquered outsole on their footwear, also known as “Bloody Shoes!” In a recent decision, European Union’s highest court ruled that Christian Louboutin’s famous red sole shoes are eligible for protection as a trademark. This decision expanded the opportunity for U.S. and European fashion designers to promote and protect their color brands in the European Union. Prior to the suit being filed in the European Union, Louboutin’s first major attempt at enforcing its mark in the U.S. occurred in 2011, following Yves Saint Laurent introducing a red shoe design on the market. Louboutin brought suit in New York federal court claiming that YSL had infringed on its 2008 U.S. trademark. YSL, on the other hand, was arguing for cancellation of the mark in its entirety based on the alleged functionality of the mark, because according to Qualitex, color that is determined to be “functional” is not eligible for trademark protection. The court ruled that that Louboutin’s red sole shoe mark was valid! Just when he thought it was over, Van Haren launched a collection of high-heeled shoes complete with red soles in 2012. Louboutin responded with a trademark infringement lawsuit against the company, arguing that the Dutch brand was causing confusion amongst consumers and argued that Van Haren was looking to profit from Louboutin’s world-famous red sole, which was a registered trademark years prior to Van Haren’s collection.
The European Union’s decision opens doors and provides U.S. businesses with a clear opportunity to expand on the promotion and marketing of their products in Europe by designing products that are identifiable by their color. It also gives opportunities for brands based in Europe, like Valentino and Hermes, to do the same. However, although this opens several doors, there are several social justice issues raises as well. This can be unfair to up and coming designers because if the color red can get trademarked, then, theoretically, all colors can become trademarked. If all of the main colors become trademarked, then how would new designers be able to diversify themselves? Additionally, despite both of these decisions, there are still other pending cases that could change the precedent! Tiffany & Co. filed an amicus brief with the Second Circuit questioning the validity of a bright-line rejection of color marks in fashion. Despite the Louboutin decision, it is still difficult to protect colors as trademarks through registration, as a color as such was not considered to be a distinctive trademark. Furthermore, despite the recognition which must be accorded to color trade marks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different ways of dealing with these types of marks.