This article was first published in the Australian
Intellectual Property Law Bulletin, October 2012 Vol 25 Issue
In the July 2011 issue of the Australian Intellectual
Property Law Bulletin, we published an article on the
litigation in the United States launched by Christian Louboutin to
prevent Yves Saint Laurent (YSL) from marketing a particular design
of a shoe with a red sole.1 Louboutin has registered the
colour red applied to the soles of shoes, both in the United States
and in several other jurisdictions.2
As the US District Court at first instance later colourfully
noted, "a flash of a red sole is today instantly recognizable,
to those in the know, as Louboutin's
handiwork".3 Surprisingly, however, the court cast
doubt on the essential validity and enforceability of the Louboutin
The Goliath v Goliath battle between the two fashion houses
cumulated in a decision of the US Court of Appeals handed down on 5
If this matter had come before the Australian courts, under the
Trade Marks Act 1995 (Cth), a trade mark for red-soled shoes would
not grant Louboutin a monopoly over all instances of red applied to
the soles of a shoe.5 In particular, YSL or any other
trader would only be caught for trade mark infringement if it were
using the red sole as a trade mark (as opposed to using it
for aesthetic purposes).
In the US, the Lanham Act does not contain the equivalent of our
"use of a mark as a trade mark" component in its test for
trade mark infringement. The US test involves two stages: first,
whether the trade mark itself "merits protection"; and,
second, whether the alleged infringing mark is likely to cause
consumer confusion, making a comparison with Australian trade mark
At the first instance, the US District Court in August 2011 held
that Louboutin's motion for a preliminary injunction did not
show a likelihood of success on its merits. The basis for the
court's finding was that single colours in the fashion industry
are inherently functional and can never be trademarked. The result
was that Louboutin's trade mark was unenforceable. Louboutin
The Court of Appeals on 5 September 2012 restored balance in the
jurisprudence of colour marks, quoting an earlier decision of the
US Supreme Court that "no special legal rule prevents color
alone from serving as a trade mark".6 The Court of
Appeals held that the same principle extends to the fashion
industry and that there was no reason why a single colour could not
acquire "secondary meaning" over time.
However, in examining the merits of Louboutin's trade mark,
the Court of Appeals considered that the evidence showed that
secondary meaning of the mark extends only to uses where the red
lacquered outsole "pops" or is contrasted with the rest
of the shoe.
YSL's shoe in question is a monochromatic red shoe with a
red sole. As the extent of Louboutin's mark was limited to
shoes where the red sole contrasted with the upper of the shoe,
there was no need to consider the second limb of the infringement
Both parties announced the decision as a victory, though one
suspects that included in the upcoming season of
"Loub-outins" may be a range of red shoes with red soles.
So last season!
1 C Logan "Louboutin sees rouge: can
other traders colour the soles of their shoes red?" (2011)
24(3) Australian Intellectual Property Law Bulletin
2 In Australia, Louboutin's application
for the same trade mark has passed the examination stage and will
be advertised in the Australian Official Trade Mark
Journal until at least 2 November 2012. As it stands, the mark
covers class 25 "ladies heeled formal and dress footwear;
ladies heeled espadrilles; ladies heeled dress
3Christian Louboutin v Yves Saint Laurent
America 778 F Supp 2d 445 (2011), as quoted in Christian
Louboutin v Yves Saint Laurent America Holding Inc 2nd US
Circuit Court of Appeals, No 11-3303 (2012).
4 Above note 3.
5 As noted previously in this bulletin; see
above, note 1.
6Qualitex Co v Jacobson Products Co
514 US 159 (1995).
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