French shoe designer Christian Louboutin is battling to keep his signature red soles proprietary, a design detail he created 25 years ago by applying his assistant’s Chinese Red red nail polish to his Pensée high heels.
His uniquely high stiletto heels, often priced above $1,000 a pair, are still known for their red soles. But protecting the design in court hasn’t been easy. It’s been an ongoing, brand-defining legal battle for Louboutin, who has defended against imitators in court for many years. He’s fighting for the soul of his soles and his brand, and the legal right to trademark a color.
The red sole is so identified with the Louboutin brand that when Cardi B’s rap hit “Bodak Yellow” dropped in October with the line “these expensive, these is red bottoms” without name-checking the brand, online searches for “Louboutin” still rose 217%.
“There is a type of joke that’s often said in Paris,” Louboutin told the New York Times in October after the song hit #1, “that my name almost became like Frigidaire.” As in, a brand name turned byword and a unique, and ownable, brand design motif in the red sole.
The European Union’s highest court is not so sure. A 2012 challenge from Dutch high-street chain Van Haren, selling iterations of Louboutin’s red soles went askew when Maciej Szpunar, an advocate general at the European Court of Justice, advised The Netherlands court that Louboutin’s trademark protection rulings on the particular shade of red might be invalid.
Louboutin’s trademark, registered in Belgium, the Netherlands and Luxembourg, referred to “the color red (Pantone 18 1663TP) applied to the sole of a shoe.” And not just women’s shoes, as the designer has used the distinctive sole for Louboutin Homme.
“A trademark combining colour and shape may be refused or declared invalid on the grounds set out under EU trademark law,” the ECJ said in a statement, outlining Maciej Szpunar’s advice to the judges hearing the case.
Szpunar expressed “doubts as to whether the colour red can perform the essential function of a trademark, that of identifying its proprietor, when that colour is used out of context, that is to say, separately from the shape of a sole.”
Sanjay Kapur, partner and trademark attorney at intellectual property firm, Potter Clarkson LLP, added:
“Whilst relevant consumers may instantly recognise a red sole shoe being uniquely associated with Louboutin, trying to persuade the courts to grant monopoly rights with such a ‘badge of origin’ may well be an insurmountable hurdle. This could mean that Louboutin would not be able to stop its competitors, including haute couture fashion houses, from offering shoes with red soles. The red sole could therefore become ubiquitous, which would seriously reduce the cachet associated with the Louboutin brand.”
Van Haren temporarily stopped making and selling the line of shoes, but have recently won a reprieve.
As The New York Times notes, “The case highlights one of the most difficult questions in fashion: In a world where designers often have distinct styles, and attract admirers based on those styles, what can, and cannot, be trademarked?”
Louboutin won a battle against rival Yves Saint Laurent in a U.S. federal appeals court, protecting his red soles as a source-identifying trademark.
Kapur said, “Whilst relevant consumers may instantly recognise a red sole shoe being uniquely associated with Louboutin, trying to persuade the courts to grant monopoly rights with such a ‘badge of origin’ may well be an insurmountable hurdle.”
As the BBC notes, Louboutin has argued in court that “the shiny red colour of the soles (of his shoes) has no function other than to identify to the public that they are mine.”
Louboutin Speaks Out
The brand commented in a statement to WWD this week, “While ordinarily Christian Louboutin does not comment directly on pending matters, we are making an exception in this instance to correct what appears to be misleading reports of the opinion of M. Szpunar, advocate general, which is seen to impact our trademark adversely. We disagree.”
Louboutin added that media summaries of the advocate general’s opinion misread its true meaning, which in actuality “supports trademark protection for our famous red sole, rather than threatening it.”
The brand added: “Advocate general Szpunar states that ‘The concept of a shape which ‘gives substantial value’ to the goods…relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.”
“Applying Mr. Szpunar’s opinion to our case support the validity of our trademark since the shape of the outsole to which the red color is applied is not intrinsically valuable,” Louboutin declared. “As for the Christian Louboutin’s red color, the only reason it has value is because of our marketing efforts as well as the public’s association of such color applied to a women’s heeled shoe outsole with Christian Louboutin.”
The company thus concluded that the “opinion is not a blow or a setback in Christian Louboutin protection of its famous red sole mark but is ultimately reinforcing our rights.”
In the U.S., both Tiffany and UPS have high levels of protection for their identifiable colors—robin’s egg blue and Pullman brown, respectively. While Louboutin holds a valid trademark for red-soled shoes in the U.S., that protection has proved difficult to legally extend to Europe. “As long as there is this variation between jurisdictions, colour trademarking is likely to remain a grey area,” as World IP Review notes.
A decision from an advocate general (AG) at the Court of Justice of the European Union (CJEU) is pending. Elaine O’Hare, senior associate at UK law firm Stevens & Bolton, says the ruling may come as a blow to Louboutin.
“If the ruling of the CJEU reflects the advocate general’s recommendation, Louboutin may well lose its red sole trademark once the case goes back before the Dutch national court. The brand will be seriously restricted in being able to protect the red sole as a ‘bade of origin’, and there is a danger that the once-exclusive red soles will no longer be limited to Louboutin shoes.”
Other brands will be watching closely to see how signature shapes and colors are affected by ‘bade of origin.’
O’Hare says, “The decision instead hinges on whether this kind of mark is a design feature that risks monopolisation of the market; whether it is an essential characteristic of shoes generally, which should therefore be kept available in the public domain.”
We certainly know what Cardi B would say about her beloved “red bottoms.”