Most Read Contributor in South Africa, September 2016
The latest ruling in the Christian Louboutin saga, which
ruled favourably for both Louboutin and the defendant, should
provide some encouragement to every South African company in the
fashion industry whose product is closely associated with a
This is according to Ilse du Plessis, Director of IP at ENS
(Edward Nathan Sonennbergs), referring to the luxury designer's
attempts in various international courts to monopolise the colour
red for the soles of his shoes.
"Louboutin failed to persuade a French court that retail
giant, Zara, was infringing a French trade mark registration that
he had for red-soled shoes, because the court felt that the
registration was too vague as it wasn't limited to a particular
Pantone number. At roughly the same time, a US court rejected
Louboutin's claim that YSL was infringing his US trade mark
registration for red-soled shoes by selling a sling back shoe that
was entirely red," explains du Plessis.
According to du Plessis, the US judge wrote a colourful and
memorable judgment, in which he held that the fashion industry was
different from other industries, and that a single colour could not
function as a trade mark in that world. The judge therefore ordered
the cancellation of Louboutin's US trade mark registration.
Du Plessis says the US decision was taken on appeal and the
appeal court held on 5 September 2012 that the lower court had been
wrong in holding that a single colour cannot be registered as a
trade mark for shoes in the USA. However, she explains that
although the court ruled that the trade mark registration was
valid, it also reasoned that it had to be limited to 'uses in
which the red outsole contrasts with the colour of the remainder of
"This meant that both parties could claim victory.
Louboutin applauded the fact that his registration had been upheld,
and YSL crowing that it could continue selling its' red
shoes," says du Plessis.
With regards to Louboutin's trade mark registration for
red-soled shoes, du Plessis says the appeal court pointed out that
single colours have been registered in other industries, for
example pink for insulation in the name of Owens-Corning, and a
green gold colour for a dry cleaning press pad.
"The appeal court said that the law in the US is quite
clear: a colour can be registered provided that it is not
functional and provided that it has acquired a secondary meaning.
The court also felt that there was nothing unique about the fashion
industry," says du Plessis.
Du Plessis explains that 'Secondary meaning' means that
the colour must have come to denote origin. "The crucial
question in a case involving secondary meaning always is whether
the public is moved in any degree to buy an article because of its
source," she says.
According to du Plessis, the court felt that Louboutin had done
enough to create a secondary meaning, stating that in their views,
Louboutin's marketing efforts around the red sole had created a
brand with worldwide recognition.'
However the appeal court did feel that the secondary meaning was
limited. "The appeal court said that the Louboutin mark is
closely associated with contrast, and concluded that Louboutin has
not established secondary meaning in an application of a red sole
to a red shoe, but only where the red sole contrasts with the
"upper" of the shoe - hence the win-win situation,"
says du Plessis.
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