It has been widely reported this week that luxury shoe designer Christian Louboutin “lost” a court case to prevent other shoe brands from copying his signature (and trademark protected) red soles, after Dutch footwear retailer VanHaren produced a similar and the matter ended up at the European Court of Justice.
The judgement delivered by the advocate general in the case seemed to suggest that the red soles were not protectable by trademark, but Christian Louboutin has argued that what he said in fact strengthened the case for his brand’s trade mark. And, say leading lawyers approached by The Industry for comment, the case isn’t over yet.
It still needs to be ratified by the European Court – and just because the red sole may or may not be protectable by trademark (shapes and colours being a notoriously difficult legal ground), there are still laws that would-be copy cats could fall foul of, so before other brands think it’s open season on the red sole, they might want to read what our legal experts have to say.
In a statement today Christian Louboutin said that the judgement delivered by the European Court of Justice’s advocate general, Maciej Szpunar, merely strengthened his brand’s trademark protection, rather than threatened it.
Szpunar said in his summing up that the combination of a colour and a shape (in this case Louboutin red and the shape of a sole of a shoe) may be refused trademark protection. This was widely interpreted by the media as a loss for Louboutin and a potential carte blanche for every other show designer to cash in on the covetable red soles, which legend has it Louboutin chanced upon by accident when, unhappy with the sole of an early shoe design, he painted it with a colleague’s red nail varnish.
But Louboutin argues that the media reports of a “loss” in this case, misunderstand what Szpunar had said.. “The [media] summaries of M. Szpunar’s opinion do not correctly reflect his view. The recent news seems to focus on M. Szpunar’s views that the combination of a color and a shape may be refused trademark protection. However, a close reading of the full opinion of M. Szpunar in fact supports trademark protection for our famous red sole, rather than threatening it,” it said.
”The concept of a shape which ‘gives substantial value’ to the goods, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.
“Applying Mr. Szpunar’s opinion to our case supports the validity of our trademark since the shape of the outsole to which the red color is applied is not intrinsically valuable. As for the Christian Louboutin’s red color, the only reason it has value is because of our marketing efforts as well as the public’s association of such color applied to a women’s heeled shoe outsole with Christian Louboutin.
“As such we are of the view that the opinion of M. Szpunar in fact supports the conclusion, even if it is in favor of the application of criteria for shape mark to our trademark (which we do not agree as we consider our mark to be a ‘position’ mark under EU law), that our mark is valid,” the statement concluded.
In other words while the shape of the sole of a shoe and a particular colour may or may not be trademark-able or have any value on their own, Louboutin has created the value of theses two factors used in combination, due to its marketing efforts and the value the public attaches to its products.
And, furthermore, say legal experts you can still be sued for stealing someone else’s designs, even if they are not trademarked. Here’s what our experts have to say:
Gary Assim, Partner, Head of IP & International Relations at Shoosmiths
“The recent Opinion from the ECJ on the Louboutin case looks like Attorney General Szpunar is trying to limit Laboutin’s ability to have a trade mark for the colour red on the sole of its shoes. The opinion still has to be ratified by the European Court so it is not a final decision yet. However, if Louboutin were unsuccessful it would only lose its trade mark it would not lose the goodwill it has built up over many years to have the red sole associated with its brand. It will, therefore, still be able to claim a monopoly over the use of a red sole by using the laws of Passing Off in the UK and Unfair Competition in Europe. The difficulty for Laboutin is that passing off/unfair competition is not as easy or as cost effective a claim to make as infringement of a trade mark.”
Tahir Basheer, Partner, Sheridans
“Although Louboutin’s red sole – as it appears as part of the shape of the Louboutin shoe and the colour red –appears to have been denied trade mark protection by the EU court, there is still substantial value of the red sole even without the registered right. This red sole detail of their shoe is synonymous with this brand. That feature coupled with the iconic design of the shoe overall makes them instantly recognisable – this in itself gives them unregistered rights which they can use to prevent copycats.
“In terms of registered protection, brands like Louboutin should look to register their shoe designs including colour features such as the red sole which they can then use to enforce against similar designs. This is particularly important where the shoe is intended to be a perrenial style sold from season to season. Brands have to register within 12 months of the publication of the design but this registered design right provides for 25 years protection – so is a valuable right to have. On the trade mark front, this is not the end of the story as the EU court will now need to make its final decision on the protection of the red sole, which will be of great interest to Louboutin and other luxury brands.”
Lucy Harrold, Intellectual Property Lawyer and Fashion/Retail Expert, Keystone Law
“Acquiring rights over colours is a fascinating battle-ground between the Courts and international brands. The Courts are keen to keep some things in the public domain such as colours, shapes, geographical locations so they can be used by all traders and creators. The brands want to protect what they consider their distinctive and valuable creations. The outcome of such disputes usually turns on the evidence of whether or not the public has come (over a substantial period of time) to view the particular Pantone colour shade as denoting the source of those goods.
“If you see a red soled shoe do you think it could only have come from Christian Louboutin or not? In this case, there is the added complexity of the combination of claiming the colour in a particular shape (the sole of the shoe) which may be excluded from trade mark protection.
“Examples of shapes excluded from protection on the same ground are the London black cab, the Tripp Trapp chair & Bang & Olfson speakers on the grounds that the shapes give those products ‘substantial value’ and therefore cannot be protected by registered trade marks. It is not over yet for Louboutin but the CJEU is likely to err on the side of resisting a monopoly over this particular colour/shape and rely on the shape exclusion to get them out of the colour bind.”
So, even if Louboutin loses, it is likely to be only a “dent in its armour” adds Basheer. Besides it has lost a similar case in France before, which appears to have done the brand no harm, despite losing one of its trade marks then too. And it doesn’t mean to say fast fashion brands are at liberty to copy without fear of reprisal, as Assim also pointed out above.
“Louboutin had a run in 2011 with Zara in respect of the red sole in the French courts – a case which it actually lost and had one of its red sole trade marks cancelled for ‘lack of distinctiveness’. So to answer the question about whether other’s are at liberty, fast fashion brands have been targeting luxury design features for some time now, not without legal challenge though,” Basheer explains.
“Brands like Louboutin have large IP portfolios and plenty of goodwill attached thereto. This is more likely to be a dent in their armour of their larger IP portfolio and in my view, it would be wrong to think that red soles are free to be copied across the board without legal recourse. For instance, there are other means such as the law of passing-off in which they could rely (at least in the UK!),” he adds.
Besides, they say copying is the sincerest form of flattery and if you make it too easy for would-be flatterers then maybe cases like this will spur designers to push the boundaries further in the future. Concludes Basheer: “Depending on what school of thought you prescribe to, the copying/piracy paradox states at some level that copying helps to foster innovation by driving those at the top end to come up with newer differentiating designs.”