A United States Southern District Judge has refused an application for a preliminary injunction by designer Christian Louboutin where he had sought to prevent Yves Saint Laurent ("YSL") from selling shoes that copy Louboutin's famous red soles.
The ruling has cast doubts over a trademark registered to Louboutin in 2008 on women's shoes with a "chinese red" outsole. Louboutin had argued that YSL's sale of shoes with a similarly coloured outsole was infringing its trademark. However, the Federal Judge has distinguished fashion from other industries where colours have been allowed registration as trademarks where products would be identical if not for colour distinguishers. The judge felt that colours in fashion serve "ornamental and aesthetic functions vital to robust competition" and so single colours, in this case Pantone-18 Chinese Red, should not be protected in a similar manner in fashion.
In order to register a Trade Mark, it is necessary to show that the mark is distinctive. European and Irish Courts have been willing to recognise trademarks of single colours in the past where, through use or otherwise, the trademark holder has been able to show distinctiveness. Burberry's famous plaid is vigorously protected but it would be interesting to see if Irish or other European Courts would hold a similar view as to the possible distinctiveness of a single colour in fashion. Wherever the next case is brought, with offices worldwide, Eversheds Intellectual Property team will be able to provide a full Trade Mark dispute service.
The case between Louboutin and YSL has been put back for further hearing where Louboutin will have to show cause as to why its trademark should not be cancelled.
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