Louboutin sued rival YSL last year, accusing it of copying the use of lacquered red on the soles of its shoes last but a New York judge denied its request for a ban on YSL selling shoes with red soles.
A three judge panel in New York yesterday (5 September) overturned the previous ruling, adding that the red sole was “a distinctive symbol that qualifies for trademark protection.”
The judgement, however, is limited to shoes where the sole is distinguishable from the rest of the shoe, allowing YSL to produce a red shoe with a red sole.
The panel also ruled that a single colour could not be trademarked, overturning the previous judgement.
Both parties claimed victory. A spokesman for YSL says: “The court has conclusively ruled that YSL’s monochromatic red shoes do not infringe any trademark rights of Louboutin, which guarantees that YSL can continue to make monochromatic shoes in a wide variety of colours, including red”.
A lawyer acting on behalf of Louboutin told Bloomberg: “We consider this a significant win, not only for Louboutin, but for the fashion industry in general.”
Fiona McBride, partner and trademark attorney at Withers & Rogers, says Louboutin’s desire to protect the colour of its soles demonstrates the “significant equity which brand owners can leverage by attaining protection for the use of a colour within a specific context”.
She adds: “The instant association of colour with a brand is a lucrative opportunity which adds value to the brand. However, achieving this recognition and being able to protect the colour through trade mark registration is not easy. There are high barriers to entry, and as we have seen in the Louboutin case, success will not provide blanket protection in relation to a particular colour or shade.
“Brand owners should examine the benefits which this limited kind of protection could provide to determine whether it is a worthwhile asset for their business.”
In November, Cadbury won a three-year trademark battle with Nestlé over the use of its “iconic” colour purple on packaging.