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Intellectual Property

Sole Ownership: A Battle Over Shoes

By September 13, 2012No Comments

An important trade-mark decision was reached on September 5, 2012 in the fashion industry. Christian Louboutin, the world-renowned designer of women’s shoes, was somewhat victorious in a US trade-mark suit which highlighted the question of whether colour could validly form a trade-mark.  The full US decision can be read here.

Louboutin shoes prominently feature a bright red sole which contrasts itself distinctly from the rest of the shoe, easily identifying the shoes on runways and streets.  Yves St. Laurent (YSL), a rival fashion designer, decided to launch a shoe line where the entire shoe, including the sole, was red.  Louboutin had already by this point used the red-soled shoes in the marketplace for a few years and had a registered trade-mark for red-soled shoes as of 2008.  The battle began when Louboutin attempted to stop YSL’s production of their all-red shoes, whereafter YSL attempted to invalidate Louboutin’s trade-mark registration.  Surprisingly, in the resulting court decision, the district court denied Louboutin’s injunction request, and allowed YSL’s request to invalidate Louboutin’s trade-mark.  The district court’s decision essentially ruled that colour could never form a valid trade-mark in the fashion industry as colour only served an aesthetic function.

However, the second circuit (appeal) court reversed the decision, and rightly so, in my opinion.  The appeal court ruled that the Louboutin red sole had acquired a second meaning that represents the brand, and therefore was entitled to protection.  In other words, the distinctive red sole is part of what defines the Louboutin brand.  The court did, however, limit that monopoly on red soles by stating that Louboutin could only have protection over shoes which had a contrasting colour difference between the sole and the rest of the shoe (as had been their previous style).  The all-red YSL shoe, therefore, could continue to be produced.

Colour in trade-marks in Canada is allowed, and roughly follow the same guidelines in the US.  No one manufacturer or business can claim strong protection over a specific colour unless it forms the basis of their brand recognition.  In this, the colour alone does not form the trade-mark, but it must add to the distinctiveness of the trade-mark.  The best colour trade-marks are where the colour itself forms part of the wares, and distinguishes the wares from those of competitors.  A well-known example in Canada is PINK insulation produced by Owens-Corning.

For more information on trade-marks, contact me.


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