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Bloody Shoes: Christian Louboutin Wins Battle Over Non-Traditional Trademark

August 30, 2018
Post by Nicholas J. Krob

“These expensive, these is red bottoms, these is bloody shoes.”

Does this line, from Cardi B’s breakout single “Bodak Yellow,” call to mind a particular fashion brand? If not, the following line from Lil Uzi Vert’s “The Way Life Goes” might help you out:

“My Louboutins new, so my bottoms they is redder.”

For over 25 years, Christian Louboutin has been a staple in popular culture, famous for its red-bottomed high heels. But can this distinctive feature, comprised merely of a single color applied to the bottom of footwear, be entitled to trademark protection? As the European Court of Justice recently determined, the answer is yes.

Louboutin, which owns a Benelux trademark for “high-heeled shoes” comprised of “the coulour red (Pantone 18-1663TP) applied to the sole of a shoe,” sued Dutch retail shoe outlet Van Haren, which was selling high-heeled shoes with red soles, in the District Court of The Hague. During proceedings, a question arose whether Louboutin’s trademark was invalid under European trademark law, which excludes marks that “consist exclusively of the shape which gives substantial value to the goods.” The District Court stayed proceedings and referred the matter to the ECJ for a preliminary ruling on whether the term “shape” was limited to a good’s three-dimensional properties like contours or whether it extended to non-three-dimensional properties like color.

The ECJ determined the word “shape” should be interpreted according to its “usual meaning,” which, in the context of European trademark law, is “a set of lines or contours that outline the product concerned” and not color alone without an outline. The ECJ noted that the “main element” of Louboutin’s mark was a specific color and “shape” was employed only to the extent Louboutin identified where on its products that color would appear.

Notably, this is not the first victory for Louboutin’s red sole trademark. Back in 2012, Louboutin sued Yves Saint Laurent in the United States for Yves Saint Laurent’s sales of monochromatic red shoes. While the Court of Appeals for the Second Circuit ruled that Louboutin’s trademark did not extend to monochromatic shoes, it determined that the red sole trademark was a valid mark to the extent it contrasted with a shoe’s upper.

One need not look further than Cardi B or Lil Uzi Vert to understand why such a simple element can be entitled to trademark protection. Trademarks serve as source-identifiers, designed to distinguish the goods and services of one from another. While this is generally accomplished through words or logos, it can in fact extend to something as simple as the color of a shoe’s sole. It is why Cardi B knows listeners will think of Christian Louboutin, and not Skechers, when she raps about her red bottoms—a valuable asset Louboutin appears set on maintaining.

Nicholas Krob is an Intellectual Property Attorney at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Nick directly via email at nicholas.krob@ipmvs.com.


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