Can you trademark a colour? French shoe designer Christian Louboutin known for sky-high stiletto shoes with scarlet soles that can sell for upward of €800 has been trying to do so for years. Louboutin first grabbed his assistant’s red nail polish and applied it to the outsoles of a shoe a quarter century ago. Since then, he has frequently declared the design element to be his recognizable signature, and argued it merits legal protection.
On Tuesday, the European Union’s highest court dealt a blow to that effort. Louboutin had filed a lawsuit in 2012 against Van Haren, a Dutch company whose retail outlets were selling affordably priced high-heeled women’s shoes with red soles. Lawyers for Louboutin claimed that the shoes sold by Van Haren, part of its Fifth Avenue by Halle Berry line, infringed his brand’s trademark for footwear. That trademark, registered in Belgium, the Netherlands and Luxembourg, referred to “the colour red (Pantone 18 1663TP) applied to the sole of a shoe.”
Van Haren had to temporarily stop making and selling the line of shoes, but the company’s lawyers fought back and the case eventually made its way to the European Court of Justice. They have now won something of a reprieve. Maciej Szpunar, an advocate general for the court, said on Tuesday that Louboutin’s red soles were not a separate entity from the shape of his high-heeled shoes, and shapes typically cannot be trademarked under EU law.
In effect, he argued in a legal opinion, Louboutin’s red soles could be refused trademark protection, sending the case back to Dutch courts to consider. Judges in national courts typically, though not always, follow advice from the European Court of Justice’s advocates general.
The case highlights one of the most difficult questions in fashion in a world where designers often have distinct styles, and attract admirers based on those styles, what can, and cannot, be trademarked?
Indeed, illustrating the complexity of the issue, Louboutin previously won a battle against rival luxury fashion house Yves Saint Laurent in a US federal appeals court, allowing him to protect his red soles as a source-identifying trademark.
But Szpunar’s opinion for the European Court of Justice “could mean that Louboutin would not be able to stop its competitors, including haute couture fashion houses, from offering shoes with red soles,” said Sanjay Kapur, a partner at British law firm Potter Clarkson and a specialist in trademark law.
Trying to persuade courts to grant such protection to designs like Louboutin’s “may well be an insurmountable hurdle,” Kapur said. “The red sole could therefore become ubiquitous, which would seriously reduce the cachet associated with the Louboutin brand.”–New York Times
