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How Christian Louboutin won trade mark dispute over red soles

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Kerry Southworth, of Harrison Drury’s corporate and commercial team, explains the reasons behind the decision in the long-running trade mark dispute involving Christian Louboutin shoes and the lessons for other companies looking to trade mark their goods.

Luxury shoe designer Christian Louboutin has successfully won a long-running trade mark infringement dispute with a rival shoe company.

What’s the background to the Louboutin trade mark dispute?

In 2010, Louboutin successfully registered a trade mark covering Belgium, the Netherlands and Luxembourg, which protected the signature pantone red colour applied to the sole of its women’s shoes.

In this registration, Louboutin made it clear that “the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark”.

Two years after this registration was obtained, a Dutch company, Van Haren, launched a new line of high-heeled women’s shoes, called 5th Avenue, which were designed with a red sole.

Christian Louboutin initially succeeded in claiming that the Dutch company’s shoe range amounted to an infringement of Louboutin’s trade mark.

How did Von Haren respond to the trade mark infringement claim?

The Dutch company sought to appeal this decision on the basis that Louboutin’s trade mark was invalid.

It argued that the trade mark registered to Louboutin consisted of a two-dimensional shape, rather than the three-dimensional drawing to indicate the positioning of the colour, as contested by Louboutin. Under existing trade mark legislation, a mark consisting solely of a shape would be incapable of trademark protection.

What are the reasons behind the court’s decision?

The case was referred to the European Court of Justice, which found in Louboutin’s favour. The court decided that the main element of Louboutin’s trade mark was the positioning of the specific colour as identified by the pantone registration number, and as such the trade mark could not be considered exclusively as a shape.

The fact that Louboutin made it clear in its trademark registration that the contour of the shoe was not to be part of the registration aided the court’s decision.

Following the European Court of Justice’s decision, the district court of The Hague last week ordered that the Dutch company’s shoe range did infringe Louboutin’s trade mark. In doing so, the Hague also ordered the Dutch company to destroy all existing copies of the shoe and to provide details of all outlets in which they were sold.

What are the lessons for businesses looking to protect trade marks?

This case shows that it is important to clearly identify what you are seeking to protect through your trade mark protection process.

My colleague David Filmer gives some further information on this subject in his guide to trade marks and passing off.

It is advisable to expert seek advice on trade mark applications at an early stage to ensure your business is protected.

To speak to a member of Harrison Drury’s corporate and commercial team about trade mark protection contact Kerry Southworth or David Filmer on 01772 258321.


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