- Professional News
- 19 April 2013
The red-soles saga continues
Louboutin has been awarded a preliminary injunction in the Benelux against Van Haren, a Dutch company which has been ordered not to market and sell black and blue red-soled shoes. And with this preliminary injunction, the saga of the red-soled shoes continues.
The battle of the red soles has been fought on both sides of the Atlantic Ocean. In the US court rooms, Louboutin and Yves Saint Laurent have previously engaged in a legal battle about Louboutin’s trademark registration of its red soles, and in Europe, Louboutin has lost a case against Zara, which was heard by the French Supreme Court. Now Louboutin has filed yet another lawsuit about red outsoles. This time in the Benelux.
Louboutin has commenced legal proceedings before the District Court of The Hague against Dutch company Van Haren for marketing and selling blue, black and red shoes with red outsoles as part of the its Halle Berry collection. Louboutin argued that this was an infringement of the Louboutin trade mark registered in the Benelux (0874489) and demanded that a preliminary injunction be granted against Van Haren’s marketing and sale of red-soled shoes.
The Hague District Court found for Louboutin and held that Van Haren’s blue and black shoes with red outsoles infringed Louboutin’s trademark. The Court attached importance to the fact that Louboutin’s figurative mark was not merely a colour mark, but had gained its distinctiveness through a gradual process. The Court further found that the products (the shoes) were in fact identical, and as Van Haren’s shoe “used Louboutin’s trademark” by applying an outsole of an almost identical red colour in the same way as the registered trademark, a possibility of confusion and the consequent infringement of Louboutin’s trademark existed.
Van Haren was ordered, within 24 hours of the decision, to stop all marketing and sale of blue and black shoes and to pay the legal costs of EUR 68,973.77 to Louboutin. Violation of the prohibatory injunction will cost Van Halen a fine of EUR 20,000 daily or, at Louboutin’s option, EUR 500 for each pair of shoes.
During the proceedings Louboutin waived its claim for infringement in respect of its red shoes, and Van Haren is therefore still allowed to sell red shoes with red outsoles.
Van Haren has already given notice of its intention to appeal the decision, just as Louboutin – as is required by current Danish rules on preliminary injunctions – must commence a confirmatory action. According to Dutch law, such action must be commenced not later than six months after the preliminary injunction was awarded. According to current Danish rules, a confirmatory action must be instituted not later than two weeks after the date of the preliminary injunction. The Danish rules in this area will be amended with effect from 1 July 2013.
“The decision seems wrong in relation to European trademark practice, where – more or less without exception – protection of single colours as trademarks for fashion products has been denied. The Benelux decision is, in actual fact, sneaking in single-colour protection through a registration of a figurative mark. Generally, the US decision in the case between Yves Saint Laurent and Louboutin seems more balanced and correct in its maintenance of protection, albeit in a limited way, against a third party,” says Nis Marinus Dommergaard, Lawyer specialising in IP & Technology at Bech-Bruun's.
For more details about the decision, trademarks, interim remedies and enforcement of rights outside Denmark, please contact Claus Barret Christiansen or Nis Marinus Dommergaard.