Walking on red soles

Louboutin cannot claim a monopoly on red soles

Louboutin cannot claim a monopoly on red soles

Fashion Designers may not claim any rights from the trademark registration of a color, ruled a New York Court in the lawsuit of the French designer Christian Louboutin vs. YSL. In particular in the fashion business colors have a decorative and aesthetical function and do not serve the purpose of a trademark, such as an indication of origin for the public.
Background of the case was Louboutin?s lawsuit against YSL?s “Cruise Collection? in the US. Louboutin sued YSL for trademark infringement and unfair competition and misleading designation of origin for the use of red soles. The “Red Sole Mark? was registered in 2008 with the USPTO. Louboutin claimed damages of 1million US$ for trademark infringement and unfair competition from YSL. Louboutin argued that he invented the red soles 20 years ago by painting the black soles of ladies shoes with red nail polish, his high heels cost several hundred dollars and became cult-objects since they were worn in the TV series “Sex and the City?. YSL countered that the inspiration for red soles were not taken from the French Designer but from the shoes worn by King Louis XIV. or the ruby shoes of Dorothy in “The Wizard of Oz”.
Judge Marrero agreed to the glamorous signals sent out by black high heels with eye-catching red soles, but he also considered a monopoly on red soles to be an illegal restriction of competition, “YSL has reasons for using red soles?, he said.
From the legal perspective the ruling is credible. Just as other trademarks, color marks require distinctiveness. The term distinctiveness refers to the specific ability of a trademark to distinguish the origin of the protected goods and services of a company from those of another company in domestic commerce. The ECJ rules: “In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought? (ECJ, decision dated 6 May 2003 – Rs. C-104/01 – Libertel).

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