The highest court of France, Cour de Cassation, has ruled that shoppers would not confuse red-soled shoes sold by Spanish fashion retail chain Zara (apparently they cost less than EUR 50) with a much more expensive red-soled heels by Christian Louboutin (EUR 4,000 or so). This decision ends the trade mark infringement fight that began in 2008.
Louboutin holds a trade mark in relation to footwear, which was depicted as a women’s shoe sole and claimed the colour red as its distinctive feature. However, lower courts in France criticised this trade mark for being too vague, as the colour claimed was not defined by a reference to the Pantone system.
Tiffany, for example, used to traditionally define their distinctive blue colour as “Robin’s egg blue” and more recently, as the colour BLUE with RGB Profile R117 G210 B204 (their latest colour trade mark in Australia has not yet been accepted for registration by the Trade Marks Office).
In 2010, Louboutin applied for another colour trade mark, this time defining it as Pantone 18.1663TP. This trade mark was opposed by several German companies and remains unregistered in Europe.
Interestingly, Louboutin has also applied for this colour trade mark in Australia (1352410) and, two years later, still has not managed to persuade the Trade Marks Office that his trade mark is sufficiently distinctive, so that customers would associate red-soled shoes exclusively with Louboutin.
Louboutin has another colour red battle in the United States, where he is suing Yves Saint Laurent. However, so far the courts in the US have held that this colour cannot be protected as a trademark. According to trade mark lawyers, granting a trade mark for the colour red in relation to footwear would significantly hinder competition by limiting the range of alternative designs and it is, therefore, not entitled to trade mark protection.
Louboutin’s experience shows that although the trade marks legislation permits colours to be registered as trade marks, often it is still difficult to achieve such registrations. Unless, it is Whiskas purple…
For any trade mark related matters, please contact trade mark lawyer Mindaugas Skavronskas.