Louboutin’s famous red soles still at stake in thorny legal dispute
The stakes are high for Louboutin. Trapped in a legal power struggle over the exclusive rights to its famous red soles, the footwear label is now holding its breath for a definitive answer. The issue is currently being examined by the Court of Justice of the European Union (CJEU) and a decision is expected to be made within the next few months, despite a spate of articles having cropped up on the web recently suggesting that Louboutin may have lost its monopoly on the renowned red soles.
The luxury footwear label clearly has little intention of losing ground, and has stepped up to deny these allegations in an attempt to clarify the thorny legal issue. "Our trademark was first registered in this version in 2007," said the label, which has borne the costs of about twenty lawsuits since then. A significant investment, but one that is necessary to defend its reputation and its business.
The matter began a few years ago, when designer Christian Louboutin's label decided to sue Dutch footwear chain Van Haren Schoenen for counterfeiting before the court of The Hague, in the Netherlands. Van Haren had started to sell high-heeled shoes with a red sole in 2012. The French label immediately won an urgent ruling stopping the sale of the shoes.
Following this ruling, Christian Louboutin brought another claim before the same court, seeking to be awarded damages and interest. Van Haren, on the other hand, questioned the validity of the 'red sole trademark', which is registered in the Benelux. The court in The Hague sought enlightenment by referring the issue to the CJEU for a preliminary ruling, asking whether it was possible to apply the criteria relating to trademarks consisting in a product shape to the red colour of the soles of Christian Louboutin's stilettos.
On 6th February, the Advocate General of the CJEU Maciej Szpunar gave his response, indicating that it was possible to consider the validity of Christian Louboutin's 'red sole trademark' registered in the Benelux in terms of the criteria applicable to trademarks consisting in a product shape.
The court in The Hague then had to rule on the claim filed by Van Haren, which demanded the annulment of the red-sole trademark registration due to the fact that the shape in question, in other words the colour red, brings its own substantial value to the product on which it appears. On this, Advocate General Maciej Szpunar stated that, to assess whether the shape the trademark consists in brings its own substantial value to the product, it would be necessary to take into account "the shape's intrinsic value only" and not "the reputation of the brand or of its owner."
Therefore, it all depends on the way in which this colour-shape combination is considered from a legal point of view. Louboutin says it is confident, because "it isn't the colour red in itself, nor the shape of the sole on which it appears, which give the shoe its value, but its uniqueness and manufacturing quality."
"As for the red sole, its value derives from its reputation, built through the marketing efforts of the Christian Louboutin label and its continued use for 25 years, so that now the general public associates the use of the colour red on the soles of stilettos to our maison. According to the Advocate General, this reputation cannot be used against the Christian Louboutin trademark, since it must not be taken into account in determining if the trademark gives its own substantial value to the product," stated Christian Louboutin.
The footwear label also underlined that the CJEU has not yet ruled on the matter. A decision is expected between May and July 2018, when the CJEU will indicate whether the criterion for trademarks consisting in a product shape is applicable to the Christian Louboutin trademark.
"A negative reply would uphold our argument, and there would be no further discussion on this issue. If the reply was to be positive, the case will be again brought before the court in The Hague, for it to apply this criterion,” explained the label, which has nevertheless interpreted the comments of the Advocate General as potentially favourable.
Such is the label’s expectation of the CJEU’s decision, as it stated in a press release: "We are confident that the CJEU, when making its ruling, if it will decide to apply the validity criteria of a trademark consisting in a product shape to our own trademark, it will take the opportunity to give specific indications to national courts as to the way of determining if a trademark brings substantial value to a product (and notably that the reputation of a brand or of its designer cannot jeopardise the validity of its trademark)."
If on the other hand the Hague's court ruling was to confirm that the 'red-sole trademark' registered in the Benelux cannot enjoy the legal protection of a registered trademark, counterfeiters could then take massive advantage of this legal loophole.
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