Thursday, August 11, 2011

True Colours

News just in that a judge in the States has denied Christian Louboutin's request for an injunction preventing YSL from selling red-soled shoes in its 2011 resort collection...

In his ruling, Judge Victor Marrero noted that:

Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.

Marrero also admitted his admiration for the red soles. In his judgment, he wrote that: "When Hollywood starlets cross red carpets and high fashion models strut runways and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once."

Interestingly, a similar battle was waged between chocolatiers Cadbury and Darrell Lea here in Australia over the colour purple, with Cadbury eventually claiming victory over the colour. (Note, however, that the "win" for Cadbury was never formally determined by the courts - an agreement was reached by DL and Cadbury whereby Cadbury was able to trade mark the colour, yet DL still used the colour.)

I digress... Back to the shoes. When reached for comment, Louboutin's lawyer stated:

We are profoundly disappointed in Judge Marrero’s decision. Although we are still studying it, it appears he has decided that in the fashion industry, one color should not serve as a trademark. While he acknowledges the fashion industry at large has recognized the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colors on outsoles without restriction and this, despite a mountain of evidence to the contrary, including a recent decision by the 2nd Panel of Appeal at OAMI in the EU that concluded exactly the opposite, calling Mr. Louboutin’s adoption of the bright red outsole brilliant. We will evaluate all the alternatives available in the days to come.

Meanwhile, YSL's lawyer says:

We're gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolize a single color for an article of apparel. As Judge Marrero indicated, YSL designers are artists and, like other artists, they should have the right to use the full palette of colors in designing their fashions for each season.

In their argument, YSL dismissed Louboutin's suggestion that he had pioneered the scarlet sole, arguing that the red soles were copied from King Louis XIV's red-heeled dancing shoes and/or Dorothy's famous ruby slippers in 'The Wizard of Oz'.

The offending YSL shoes

What do you think of the decision? Obviously it's going to be appealed, so there probably isn't much point in this conjecture, however... What do you think? (As non-trademark lawyers, of course).

A few years back, Peeptoe Shoes used to have red soles on its shoes, and then it rather smartly changed the colour to purple - presumably based on threats to litigate by Louboutin (totally guessing there, but it would make sense). Trade mark battles are among the most expensive legal fights to have, and can be a major distraction for a brand that is in the early stages of building its image as Peeptoe then was.

And what might the ramifications be for other brands. What would Tiffany & Co say?

No comments: