The shoemaker Louboutin is well known for high heeled shoes with a glossy vivid red outsole protected by trademark rights.
Louboutin sued Yves Saint Laurent (YSL) alleging that the use of red color on high heeled shoes outsoles creates a likelihood of confusion and then constitutes a trademark’s infringement.

On August 10, 2011, the New York District Court stated that the red color, qualified as Chinese red by Louboutin, cannot be identified as a distinctive sign, which implies that trademark protection cannot be granted.

Louboutin declared that these red outsoles are an important element of the company’s image and that many figurative trademarks were entitled to trademark protection such as the Louis Vuitton logo or Burberry check.

However, the judge said that color serves ornamental and aesthetic functions in the fashion industry and red color used by Louboutin could not confer an exclusive right. Red outsoles are not considered as a distinctive sign allowing customers to identify the product. The judge added that no fashion designer should be allowed a monopoly on a color because they all need to be able to use the full palette, as it is the case for the artists.

The EU case law states that a color is entitled to trademark protection under certain conditions listed by ECJ in May 6, 2003 . It is in particular specified that a distinctive criterion has to be proved and the color must be graphically represented in a precise, easily accessible, lasting and neutral way. Nevertheless, the distinctive criterion is very rarely accepted and the European Tribunal of 1st instance rejected two trademarks claims related to colors for lack of distinctive criterion. It is interesting to note that the OHIM recently accepted the registration of a three dimensional trademark of the famous red outsoles, the description of the trademark being “high heeled shoes”, not only “shoes”.

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1. Christian Louboutin SA et al v. Yves Saint Laurent America, Inc et al., 1:11-cv-2381 NYSD August 10, 2011
2. CJEU, May 6, 2003, Libertel Groep BV contre Bureau Benelux des Marques, C104/01.
3. EGC, Nov. 12, 2010, aff. T-404/09 et T-405/09

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