Louboutin versus YSL

Christian Louboutin (“Louboutin”), the creator of the famous red-bottomed shoes, brought a trademark infringement action against fashion house Yves Saint Laurent (YSL) claiming that YSL infringed on its red sole mark (the “trademark red sole shoe”) by selling an all-red monochrome dress shoe, featuring a red insole, heel, upper and outsole. YSL brought a counterclaim seeking to invalidate Louboutin’s Red Sole Mark on the grounds that it was ornamental and not distinctive and purely functional.

After investing a great deal of time, money and effort in creating a trademark based on recognizable red soles in women’s high fashion footwear, Louboutin applied for and was granted federal trademark registration for its outsole. red, which has become indicative of Louboutin footwear. The Red Sole Mark consists of a lacquered red sole on the shoes. Several years later, YSL launched a new line of monochromatic shoes in different colors including red. Monochromatic shoes featured the same color all over the shoe. Unhappy with the competitor’s use of a “red sole”, Louboutin filed suit against YSL in the United States District Court for the Southern District of New York and sought a preliminary injunction. In dismissing the injunction petition, the district court found that Louboutin was unlikely to succeed in its infringement claim because its red sole brand was unenforceable due to the fashionable single-color markings being inherently functional. . The court held that a single color can never serve as a trademark in the fashion industry. Such as according to rule was rejected by the Court of Appeals for the Second Circuit, which ruled that a single color may be entitled to trademark protection if it acquires a secondary meaning and consumers come to recognize that color, such as it is used on products or packaging, as an identifier of the source or producer of the products. As the Supreme Court put it:

over time, customers may come to deal with a particular color on a product or its packaging (for example, a color that, against the background, looks unusual, such as the pink on a company’s insulating material or the red on the head of a large industrial bolt) as signifying a brand. And, if so, this color would have come to identify and distinguish the goods…that is to say., “to indicate” their “source” – in the same way as the descriptive words of a product. . . can come to indicate the origin of a product.

[Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).]

According to Qualitex, a case involving a claim for trade dress protection for the color of a dry-cleaning press pad, the color alone can be protected as a trademark if it serves no other important function. The functionality of a mark is analyzed from two angles: (1) traditional “utilitarian” functionality, which examines whether the mark is (i) essential to the use or purpose of the item, or whether it (ii ) “affects the cost or quality of the item; and “cosmetic” functionality, where trademark protection significantly impairs competitors’ ability to compete in the relevant market. Both forms of functionality serve as an affirmative defense against a trademark infringement claim.

A mark is functional in the utilitarian sense if it is essential to the use of the article or if it affects the cost of the article. Additionally, if the aesthetic design of the product is the mark itself, that mark may be considered functional if granting the exclusive right to the trademark owner would create a significant disadvantage for competitors. For example, in Johnson & Johnson v Actavis Group HF the plaintiff, Johnson & Johnson, sued to enforce its gold mark, the color used on the packaging of NEOSPORIN antibiotic ointment. The court considered the functionality of the gold mark to determine whether the green/yellow color would significantly impede competition for other antibiotic ointments. Finding that this was not the case, the court found that various other colors were used in the packaging of similar products and that the defendants could not prove that the inability to use the color gold disadvantaged competitors.

With respect to the red-bottomed shoes, the Second Circuit Court fell short of the defenses of functionality as it concluded that Louboutin’s red sole branding only offered protection in the case of a contrasting shoe color. Meaning, the lacquered red sole, as applied to a shoe with a “shaft” of a different color, has acquired a secondary meaning in identifying and distinguishing the Louboutin brand. As such, the distinguishing mark that qualifies for trademark protection is the red background on a shoe of a different color, such as black.

Accordingly, the Court of Appeal upheld the denial of the preliminary injunction finding that YSL’s monochrome red shoes did not infringe Louboutin’s red sole mark because YSL’s shoes were red all over and did not not use the red sole on a shoe of a different color.

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