Rachel Cook, Associate, Fox Williams LLP's Commerce and Technology Team and Member of the Fashion Law Group

The New York Court has refused to grant Christian Louboutin's application for an interim injunction to stop the sale of YSL’s AW/11 Cruise collection of shoes, which features red soles. This Judgment is likely to be fatal to Louboutin’s claim as the Judge has indicated that the red sole of Louboutin is unlikely to qualify for trade mark protection. Also, in an illustrative example of the hunter becoming the prey, YSL’s next step is likely to be to seek a revocation of Louboutin’s US trade mark registration, weakening the protective armour of the Louboutin brand.

The Judge’s conclusion has been reached on the basis that, particularly in the fashion industry, colours need to be freely available for use to ensure robust competition. While we can expect that Louboutin will appeal and strongly resist any revocation action of its trade mark in the US, it will also be likely to be considering whether it will be successful in validly registering and protecting the red sole in other countries.

Under UK and EU law it has been accepted that colours are registrable as trade marks, to the extent that they are capable of distinguishing one business's products from another - as in the case with all trade marks. However, the threshold for demonstrating that a colour denotes origin is far higher than for a simple word mark or logo, as the public do not naturally associate colour with trade origin.

Further, to be successful any application would in practice need to be for a particular pantone and founded upon use, such that the colour has acquired distinctiveness in relation to the products that it is being used on and the manner of that use. Christian Louboutin’s red sole shoes have in recent years gained a substantial reputation through their high profile celebrity followers and being featured in films such as Sex and the City, so that fashionistas recognise the shoes by the red sole. It is no surprise, therefore, that Christian Louboutin has registered its red soles as a trade mark in the UK.

In order for Christian Louboutin to prevent any use of red soles in the UK (unless the same pantone was used) Louboutin would have to show either that consumers were confused between the two products or that the use took unfair advantage of the reputation of Louboutin’s mark. Both these tests will be far more difficult to fulfil when dealing with an entity such as YSL given that the consumers for both brands will be sophisticated and YSL would be able to argue that its own profile in the fashion industry is such that it would not derive any substantial commercial advantage from using a red sole.

This article was written by Rachel Cook, an associate in Fox Williams LLP’s Commerce and Technology team and member of the Fashion Law Group. Rachel can be contacted on rcook@foxwilliams.com or 0207 614 2669.

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