Louboutin Wins! Red Sole Shoe Protected by Trade Marks!!

Kym Livesley, Partner, Sydney
Alexia Marinos, Senior Associate, Sydney
French Designer, Christian Louboutin has been successful in his battle against iconic luxury fashion house Yves Saint Laurent.  A New York Federal Court of Appeals recognised that Louboutin’s trade mark signature red soles is valid and enforceable against other traders using the colour on soles.

The decision has caused much controversy in the fashion industry with many taking the view that “no designer should be able to monopolise a colour in fashion”.

The Court of Appeal ruled that whilst YSL’s red footwear outsoles infringed Louboutin’s trade mark for red soles, YSL’s monochromatic red shoes do not infringe Louboutin’s trade mark rights.

In April 2011, Louboutin brought a copyright and trade mark infringement action in the Federal District Court in Manhattan, New York, against YSL over four shoe designs that were featured in the YSL Cruise 2011 collection.  YSL’s shoes featured red footwear outsoles that were virtually identical to Louboutin’s red sole trade mark.

Our previous update on this case can be seen here.

In 2011, Judge Victor Marrero ruled that Louboutin’s trade mark was “overly broad” and most likely not protectable.  He implied that the trade mark should be cancelled despite the fact that he described Louboutin’s shoes as “a product visually so eccentric and striking that it is easily perceived and remembered”.

Louboutin immediately appealed the decision.

The New York Federal Court of Appeals rejected Jude Marrero’s earlier decision stating that Louboutin is entitled to its trade mark on red soles, except in circumstances where the entire shoe is red.

The case will return to the lower court for review by a trial judge, however, Louboutin can, for now, enjoy the monopoly in his signature red sole shoe.

Louboutin’s trade mark application for red sole shoes has now been accepted for registration by the Australian Trade Marks Office.  It will be interesting to see whether any oppositions to the application are lodged.  If no oppositions are lodged, Louboutin’s red sole monopoly will extend to Australia.

If you would like information about registering your trade mark in Australia and internationally, please contact Alexia Marinos, Registered Trade Marks Attorney and Senior Associate at Gadens Lawyers.

Alexia Marinos
Registered Trade Marks Attorney and Senior Associate
P +61 2 9931 4955
E amarinos@nsw.gadens.com.au