BATTLE OVER THE RED SHOE

The issue of whether a color is to be regarded as a shape is a long-standing question. Various directives under the trade mark laws are not in favor of registration of any sign which gives substantial value to the goods.

After observing the plethora of cases for registration of specific colour soled shoes it is a well settled proposition that the contour is not a part of the trademark but a mere representation to depict the positioning of the mark ought to be protected.

In 2010 the Paris-based designer Louboutin for his footwear brand – which is famous for its Chinese red shoe soles –obtained the registration of a Benelux trade mark for goods in Class 25. Initially the registration was for footwear but in 2013 it was amended to limit the goods covered to high-heeled shoes.

Louboutin’s unmistakable red-soled shoes enjoy a popularity bolstered by TV shows like “Sex and the City” and by stars like Jennifer Lopez and this fame prompted him to trade mark his red-soled look.

A glimpse of Battle of brands over the red soled shoes trade mark

Louboutin’s footwear brand is recently in news regarding a dispute against Dutch footwear brand Van Haren.

Earlier Louboutin won a legal battle over the red soled shoe against YSL. He sued YSL for using red soles on the bottom of its pumps. Louboutin won the battle by sticking to his point -among the label-conscious segment of the society, his red-soled shoes are the equivalent of his signature and should be off limits to his rivals, including Yves Saint Laurent. In the case he argued that use of red footwear by YSL outsoles that are virtually identical to Louboutin’s Red Sole Mark is likely to cause confusion, mistake and deception among the relevant customers. After a long exhaustive court battle, YSL dropped their case and finally agreed YSL to make red shoes where both the soles and uppers are red but still granted Christian Louboutin trademark protection over the red sole alone.

Right after one year, Louboutin sued Van Haren over the sale of high-heeled women’s shoes with red soles, for using his signature style of red soled, seeking an order from the court to force Van Haren to stop selling its own red soled shoes under its own brand. the Dutch brand is now challenging the validity of Louboutin’s trade mark on grounds that it would be a 2-dimensional mark (the colour red) which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value.

Conclusion:

Any 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 an easy task. Due to high entry barriers as has been observed in the case, success does not give protection to a particular colour or shade.

In line with the directives in any case the absolute grounds for refusal do not prevent registration of a sign consisting the shape of goods. In tags along a significant non-functional element.