Sad Souls for Red Soles

Remember our post about Louboutin’s red sole battle in Switzerland and its fight with YSL? Well, we have some updates!

Recently, the French shoe brand was turned down by the highest court in Switzerland in its application for a federal trademark protection of its ever-famous red soles. The reason for the rejection? The court decided that Louboutin’s red soles were only an aesthetic feature, which does not quite warrant trademark protection.

In making its decision, the Federal Supreme Court in Lausanne upheld the Federal Administrative Court’s decision, rendered in April 2016, which stated that Louboutin’s red soles were a “decorative element,” rather than distinctive to the brand. This lack of a distinguishing feature is what resulted in the failure to obtain trademark protection. Although Louboutin had appealed the Federal Administrative Court’s decision, it was, yet again, unsuccessful at the Supreme Court.

It must be noted that Louboutin does, in fact, enjoy trademark protection in other jurisdictions, such as the United States, China, Russia, and Australia. However, clearly, Switzerland has not followed suit, and has taken an unprecedented stance.

Sadly, Louboutin’s struggle does not end there. In 2011, the brand took on the equally well-known label, YSL, and filed a lawsuit in the U.S. District Court for the Southern District of New York. Louboutin alleged that YSL was liable for trademark infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution based on Louboutin’s federal registration for the red sole trademark with the U.S. Patent and Trademark Office in 2008. The relief requested by Louboutin was a preliminary injection to stop YSL from further advertising its red monochrome shoes or any other shoe that may be easily confused with Louboutin’s red sole trademark.

This, understandably, did not make YSL happy. In fact, the Parisian fashion house launched a counterclaim to cancel Louboutin’s red sole trademark. YSL’s reason was that the soles were not distinct, but rather ornamental, which should not warrant trademark protection.

This claim went through the  district court and the Second Circuit Court of Appeals. Eventually, the court held that while customers did, in fact, equate the red soles with Louboutin,  the brand did not “show that the secondary meaning of its red sole mark extended to uses in which the sole did not contrast with the upper part of a shoe (i.e., on monochromatic red shoes).” This caused the court to limit Louboutin’s red sole trademark via an order to the  U.S. Patent and Trademark Office. As such, Louboutin’s trademark only extends to instances in which the red outsole has a colour contrast with the attached upper part of the shoe.

Did you ever think that the soles of a shoe can cause such a mess? Well, for Louboutin, this was an import decision, which only makes us appreciate the minor things in fashion and the law.

As we always say: “It’s all about the details.” (Hint: this tip is especially relevant to accessorizing).


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