By Tegan Miller-McCormack and Sarah Simpson
In the world of fashion, few things are as iconic as Christian Louboutin's signature red-soled shoes. Since Louboutin painted the sole of a shoe with his assistant's red nail varnish in 1993, the red-bottomed sole has become synonymous with luxury, style and celebrity. With this, the brand and its legal team are red-hot in their determination to protect the renowned mark.
Recently, the brand prevailed in both the courts of India and Brazil, continuing a long line of legal victories and further consolidating Louboutin's position in the fashion industry.
Stepping into success: The Brazilian Chapter
Red-soled heels remain exclusively for Louboutin's use in the brand's recent preliminary victory in Brazil1. In the latest chapter of Louboutin's ongoing legal saga, the Brazilian Patent and Trademark Office (BPTO) rejected Louboutin's application to register its use of the colour red (Pantone 18-1663TP) on high-heeled shoes. The BPTO rejected the mark on the basis that an "application of a non-distinctive sign on a support will not be registrable as a position mark," which is a trademark consisting of the specific way in which the mark is placed on or affixed to the product.
Louboutin challenged the rejection at the Federal Court to gain protection for the mark and was awarded a preliminary injunction. The judge found that the BPTO erred in its assessment of the registrability of the position mark, as it failed to consider the positioning of the color red on the sole of the shoe as an "inseparable part of the mark." The judge also noted that the BPTO did not appreciate that the positioning of the red sole deviates from the customs of the footwear industry. Louboutin's consistent use of the red sole, married with public associations of the red sole to the brand, makes it capable of being distinct and registrable as a mark. Following the judge's decision, Louboutin's trademark application was referred back to the BPTO for a more comprehensive examination that will take the mark as a whole into account to determine its eligibility for registration. Here in The Katten Kattwalk, we will be keeping an eager eye out for the next installment from the BPTO.
Stepping into success: The Indian Chapter
recently took another victorious step in the Delhi High Court2. This time, the dispute centered around an Indian footwear company called The M/S Shoe Boutique, which mimicked the signature red-soled and spiked shoes in an attempt to benefit from Louboutin's reputation globally. The court awarded Louboutin a preliminary injunction and damages, consistent with a previous Delhi High Court ruling against Kamal Family Footwear and Adara Steps3. In particular, the court expressed "no doubt" the products were "knockoffs or look-alikes" of Louboutin's "distinctive shoes and footwear." While Louboutin's registered trademark filed with the Indian Patent Office more than a decade prior surely influenced the outcome of the dispute, the judge took pains to clarify that the court does not recognize a monopoly in favor of Louboutin for "all spiked shoes or coloured soles." Instead, the court granted an injunction because the products were a "colourable or a slavish imitation" of the shoes.
Lessons from Louboutin: Shoe the Right Thing, Invest in Trademark Protection
Louboutin's recent victories reaffirm the power of consistent and distinctive branding in the competitive world of fashion. The brand's legal team relied on various forms of evidence, such as paparazzi photos, sales figures and its abundant registrations in other jurisdictions to prove that the public connects red-soled shoes to Louboutin.
These decisions further illustrate the importance of registering trademarks, defending against infringements and even appealing rejections where there is legal uncertainty. While a brand's unique visual elements may not immediately meet the standards for protection in all jurisdictions, the Louboutin outcome in Brazil is evidence that persistence pays off: that preliminary injunction prevented the red sole from entering the public domain, protecting what may still become a registered trademark in Brazil.
Certainly, Louboutin's unwavering commitment to preserving the integrity of its iconic red sole for 30 years has left its red imprint on both the catwalk and the courtroom.
*Nicole Akinyemi and Hayley Rabet, trainees in the Intellectual Property practice, contributed to this article.
To read The Katten Kattwalk | Issue 26, please click here.
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