Louboutin Wins Lawsuit, Protects Red Soles

According to a decision by the Court of Justice of the European Union (“CJEU”), Christian Louboutin maintains the right to trademark his shoes’ signature red soles, thus protecting a principle characteristic of his designs from being imitated and sold for less by competitors.¹ The lawsuit comes after a series of disputes between the designer and other brands who he alleged to have stolen similar distinguishing design traits.²

Louboutin filed this particular lawsuit against Van Haren Schoenen BV³ in 2012.⁴ Louboutin argued that Van Haren, a retailer in the Netherlands, was violating his Benelux trademark (“the mark consists of the color red (Pantone 18-1663TP) applied to the sole of a shoe…”⁵) by “selling affordably priced high-heeled women’s shoes with red soles.”⁶

Van Haren opposed this argument, asserting that “the trademark was invalid on the basis of Article 2.1 of the Benelux Convention… according to which marks consisting exclusively of a shape that gives substantial value to the goods cannot be considered as trademarks.”⁷

In essence, the argument was whether or not the color of the sole was considered a shape.⁸ In the midst of proceedings, Louboutin published a press release clarifying the statements made by Maciej Szpunar⁹, the advocate general. In Europe, the advocate general states his/her unbiased viewpoint on the dispute and offers a solution, which the court may or may not follow.¹⁰ The document stated the following:

“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.”¹¹

In the end, the CJEU decided in favor of Louboutin; color could not be considered a shape and thus denied a trademark. Even so, the National Law Review highlights how the ambiguous wording of the updated article could continue to cause problems for the brand: “‘Pursuant to this new article… the shape, or another characteristic, which gives substantial value to the goods’ shall not be registered or shall be declared invalid…. Shall a color be considered as ‘another characteristic,’ and, if so, will the well-known Louboutin red sole be found to give substantial value to high-heeled shoes?”¹²

For now, Louboutin can celebrate.

1. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.
2. Butler-Young, Sheena. “Christian Louboutin Claims Victory in Legal Dispute Over Signature Red Soles.” Footwear News, Fairchild Publishing, LLC, 12 June 2018, footwearnews.com/2018/fashion/designers/christian-louboutin-lawsuit-red-soles-europe-1202573077/.
3. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.
4. Paton, Elizabeth. “Can Christian Louboutin Trademark Red Soles? An E.U. Court Says No.” The New York Times, The New York Times Company, 6 Feb. 2018, www.nytimes.com/2018/02/06/business/christian-louboutin-shoes-red-trademark.html.
5. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.
6. Paton, Elizabeth. “Can Christian Louboutin Trademark Red Soles? An E.U. Court Says No.” The New York Times, The New York Times Company, 6 Feb. 2018, www.nytimes.com/2018/02/06/business/christian-louboutin-shoes-red-trademark.html.
7. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.
8. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.
9. Butler-Young, Sheena. “Christian Louboutin Claims Victory in Legal Dispute Over Signature Red Soles.” Footwear News, Fairchild Publishing, LLC, 12 June 2018, footwearnews.com/2018/fashion/designers/christian-louboutin-lawsuit-red-soles-europe-1202573077/.
10. Haglund, Stina. “The Role of the Advocate General and the Development of Direct Effect.” EU Constitutional Law | Örebro Universitet, 13 Aug. 2012, eulaworebro.wordpress.com/2012/08/13/the-role-of-the-advocate-general-and-the-development-of-direct-effect/.
11. “Press Release from Maison Christian Louboutin Following the Advocate General Szpunar’s Opinion in the Case C-163/16 (Christian Louboutin / Van Haren Schoenen) Pending before the European Court of Justice:” Russo-British Chamber of Commerce, RBCC, 7 Feb. 2018, www.rbcc.com/news/press-release-from-maison-christian-louboutin-following-the-advocate-general-szpunar-s-opinion-in-th/.
12. Morelli, Laura. “The Louboutin Saga: Victory, for Now.” The National Law Review, National Law Forum, LLC, 27 July 2018, www.natlawreview.com/article/louboutin-saga-victory-now.