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And in the Red Corner: the latest challenge to Louboutin's Sole
By Christopher J Sherliker

Few women in the world with the slightest interest in fashion will be unfamiliar with the iconic red sole of the Christian Louboutin stiletto. Popularised by celebrities from A-list to Z-list, Louboutins have become one of the most recognisable statements of glamour and luxury in the fashion world.


 

For years now, Christian Louboutin has been known for actively and aggressively protecting its brand against a flood of copycat products – from both high-end fashion stores and High Street brands – with varying degrees of success.

Only in February, the designer lost an ongoing court battle with YSL in the US over claims the label copied his famous red soles.

Intellectual Property Solicitor (and Louboutin aficionada) Izabela Mountford now brings the saga up to date.

Most recently, Louboutin sued Zara France for "counterfeiting and unfair competition" when the Spanish fashion store started selling pairs of red-soled, opened-toed shoes resembling one of Louboutin's own styles. The courts initially supported the designer's case but, following Zara’s appeal, this was overturned, with the designer ordered to pay €2,500 in compensation.

Even though Louboutin owned registered trade mark rights in France in respect of the colour red, it was argued that the trade mark registration was too vague in that it did not contain a Pantone colour reference characteristic to the brand.

As a result, Louboutin’s registration in France has been cancelled and Zara is now allowed to offer customers its own version red-soled shoes. It is understood that since the judgment, Christian Louboutin has filed a new trade mark application seeking to protect the colour with the correct Pantone reference.

The judgment has attracted an equal amount of support and criticism, especially in the fashion industry. The critics fear that, as a result of challenging the exclusivity of the uber-luxurious brand in yet another case, the ultimate appeal of the design will be lost.

On the other hand, many will argue that the visual appeal and quality of Louboutins is so striking that it will always be easy to distinguish between the genuine product and the cheap imitation. The latter will not be able to compete in terms of the quality of materials used, weight and finish; therefore the brand is unlikely to lose its glamorous status.

For now, it appears that Zara France will continue selling its own version red-soled open-toe slingbacks, but it is yet to be seen to what extent luxury brands will take advantage of the freedom to offer competitive red-soled shoes of their own.

A question also arises as to whether Louboutin’s intellectual property rights in the trademark red soles will be open to challenge in other jurisdictions, and to what extent these are defensible.

In the UK, for instance, Louboutin’s rights in the red sole (and specifically, the colour red Pantone No. 18.1663TP) have been protected since 2007 by means of a trade mark registration. It is yet to be seen to what extent this registration will be open to question in light of the recent Zara judgment in France, or whether the indication of colour will serve as a deterrent to such potential challenges, at least for the time being.

For anyone considering protecting a specific colour as a trade mark in the UK, a degree of caution is recommended. Although it is possible to register a colour trade mark, in practice, it has been exceedingly difficult to persuade the Registry that the colour has the capacity to distinguish the goods or services of the applicant from those of other undertakings – and this is the essence of a registered trade mark.

It may be possible to overcome the Registry’s objections by filing evidence to demonstrate that, as a result of extensive use, the mark has acquired a distinctive character, meaning that the relevant consumer would be able to associate the colour trade mark with its source. Indeed, it would appear that, when filing the UK application, Christian Louboutin relied on such evidence, demonstrating that as a result of the use made, the trade mark had acquired distinctive character and was therefore registrable.

However, it is worth noting that Christian Louboutin is also an internationally recognisable brand and therefore capable of demonstrating the required level of distinctiveness to justify registration. In case of other, new or less-known brands, it may be very difficult to convince the Registry that a specific colour should serve as a trade mark and so be protected.

Added: 29th June 2012

Christopher J Sherliker is a partner for Silverman Sherliker LLP who provide legal solutions across a spectrum of requirements.  Find out more about Silverman Sherliker LLP.

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