Aren’t those Louboutin?
Whenever a woman sees a pair of shoes with red soles, the luxurious brand of Christian Louboutin springs to mind. This feature and the right to use it is worth millions, as it does what a trademark is supposed to, it is a clear indication of origin.
However, the very fact that the red sole is so valuable to the product has left Louboutin with quite a predicament, as the on-going saga regarding the protection of their “red sole” trademark took a new turn in the beginning of April when a Belgian Court declared the mark in Benelux invalid during infringement proceedings against the Dutch shoe company, Van Dalen Footwear BV.
The court began by defining the mark as a shape mark and not a colour mark, as the red sole must be viewed in context of the shoe as a whole. The court then stated that the shape mark of the red soles are the primary selling point of the shoes, and therefore should be declared invalid as it gives the shoes their substantial value.
The relevant provision in this regard exists in order to prevent a trademark holder from establishing monopoly on technical, functional or aesthetic qualities of a product. Such qualities should rightly be sought protected by other IP rights such as patents, designs or copyright, as these rights do not last eternally.
Without needing to, the Belgian court went on to assess whether the shape mark significantly departed from the norm, so that it could serve as an indication of origin of the goods in question. As the defendant, Van Dalen, had shown many examples of shoes with a red sole, which did not originate from Louboutin, the court concluded that this feature was common, and the shape therefore lacked distinctive character.
The latter conclusion is quite different from the US decision of 2012, where the Second Circuit Court found the red sole to be a distinctive symbol that qualifies for trademark protection, when the red sole is in contrast with the colour of rest of the rest shoe. In that regard, the US court noted that “By placing the color red in a context that seems unusual and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand, to those in the know, instantly denotes his shoes’ source.”
When assessing this decision, the invalidity of the shape mark due to the “substantial value” provision seems wrong in this writer’s opinion, as the Louboutin mark is not comparable to other marks typically being declared invalid due to the same provision such as the shape mark for the Bang & Olufsen speakers. The substantial value of the latter mark depends on the design itself, whereas the value of the red soles is not in the design of the shoe as this is not unique. The value is in the red sole but only because of what it represents – the luxury world-known brand Louboutin. Consequently, the reasoning given by the Belgian court can seem dubious. It can in some way appear ironic that the very success of these products later lead to the invalidity of the right to use the mark.
Instead of applying this provision, the court should have merely discussed the acquired distinctiveness and perhaps noted that the requirements for achieving a sole right to a normal colour as red for a broad item such as women’s shoes’ soles are very high. Had distinctiveness been found, the court could have gone on and discussed whether this is diluted due to the many similar products out there. As most people still relate the red sole to the Louboutin mark – despite the many copies – the outcome of this discussion is not clear, and therefore very interesting.
The Louboutin saga is a good illustration of the difficulties in registering and protecting shape marks. Especially when the mark is a simple colour of a sole. The global legal battle regarding this mark once again confirms that while trademark protection of shapes may seem to be a good choice, as it offers the potential of unlimited renewal, there is an apparent risk of the mark being declared invalid either due to lack of distinctive character, or dilution as a result of the product’s success.
Anders Michael Poulsen, Attorney at Law