A US Court has refused Christian Louboutin’s request for an injunction to prevent Yves Saint Laurent from selling red soled shoes pending final Judgment.
Louboutin’s luxurious red soled shoes are a favourite amongst celebrity fashionistas and the designer counts Beyonce, Victoria Beckham and Sarah Jessica Parker amongst his devotees.
In April this year, Louboutin issued Court proceedings against luxury fashion house YSL claiming that it was selling shoes in its 2011 resort collection bearing a red sole which was ‘virtually identical’ to that for which Louboutin has a US registered trade mark.
YSL hit back at Louboutin, whose claim includes a demand that YSL removes its red soled shoes from sale and pays over a million dollars in damages, accusing the shoe designer of having been ‘fraudulent’ in his trade mark application when he claimed that he enjoyed ‘exclusive use’ of the red sole. YSL argued that red outsoles have been common in shoe design since as far back as the time of King Louis XIV in the 1600’s.
In an initial ruling given earlier this month, a District Court in New York refused to force the removal from sale of the contentious YSL shoes and ordered that YSL could continue to produce and sell the shoes pending final decision. In a further blow to Louboutin, the Judge hinted that the designer’s monopoly on red soles could be about to end, stating how, in his opinion
‘…in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition…Louboutin is unlikely to prove that its red outsole brand is entitled to trade mark protection…’
Christian Louboutin has seen red (!) over the decision declaring that he will ‘fight like hell’ to protect his trade mark. Following the decision, Louboutin’s lawyer stated that the designer was ‘profoundly disappointed’ with the outcome particularly in light of the recent Court ruling in Europe which had labelled the bright red outsole as ‘brilliant’ and concluded exactly the opposite to the US Court.
With an appeal already lodged against the Judge’s interim decision and the final Judgment on hold pending the outcome of that appeal, the battle between these 2 powerhouses is set to run for some time.
Registering a colour as a trade mark can be an extremely effective way of protecting your brand and preventing counterfeits, as brands such as Orange (orange) and Vanish (pink) know. However, the conditions to meet before registration will be granted are strict and very few colour mark applications are successful.
For any further information please contact Hayley Devlin, 0207 355 6048.