Christian Louboutin S.A has achieved a partial victory before the United States Court of Appeals (the ‘Court’) in its trade mark infringement action against Yves Saint Laurent. The Court held that Louboutin’s red soles were an enforceable trade mark; however, it outlined that this was only in circumstances when the rest of the shoe is painted in a contrasting colour.

The Court’s ruling stemmed from the District Court’s refusal to grant injunctive relief to Louboutin in proceedings alleging that Yves Saint Laurent infringed its federally-registered red sole trademark. According to the District Court, the law did not allow “recognition of a trade mark for the use of a single colour for fashion items”. Please see our previous articles in relation to Louboutin’s claims of trade mark infringement in the EU and USA, here and here.

In its decision the Court found that Christian Louboutin had a valid and enforceable trade mark with “the requisite ‘distinctiveness’ to merit protection” and that “the district court’s conclusion that a single colour can never serve as a trade mark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality”.

However, the Court also stated that Louboutin’s red sole is only entitled to trade mark protection for a red lacquered outer sole provided that, the sole contrasts with the colour of the rest of the shoe and explained that granting Louboutin extensive rights to the colour red would have the effect of harming competition. The decision therefore affords Louboutin limited trade mark protection, as Yves Saint Laurent is now permitted to continue to produce its monochromatic shoes with red outsoles. This judgment and its influence on future decisions in the EU will be monitored with interest.

Contributed by: Leo Moore