• Professional News
  • 09 January 2013

USA: Are red-soled shoes a protected trademark?

In the USA, the Second Circuit Court has rendered its decision in the dispute between Christian Louboutin and Yves Saint Laurent. The legal dispute between the two fashion firms was initiated by Louboutin, USA, which holds a 3D trademark for its red-soled shoes. However, there seems to be no definitive winner in this case.

For many years, Yves Saint Laurent has been selling shoes with a red sole. Louboutin, according to its trademark registration, regarded this as an infringement of its trademark rights.

The case has received much attention, not only because of the parties’ sometimes highly entertaining public exchanges concerning which shoe design was inspired by which designer, but also because it is generally believed in most countries, including the USA, that a designer cannot trademark a specific colour. The mandatory general rule has, until now, been that a single colour is not sufficiently distinctive to serve as a trademark in the fashion industry. In accordance with the interpretation of the doctrine of aesthetic functionality in, among others, American case law, single colours are considered to be functional.

In the autumn of 2012, the US appeal court, the Second Circuit Court, held that Louboutin’s red-soled shoe trademark from 2007 was valid, but at the same time held that Yves Saint Laurent’s use of a red sole in the actual circumstances did not infringe Louboutin’s trademark. Another issue in the dispute was how to interpret a trademark registration, where the colour is specified in connection with its placement on a specific part of the product.

The International Trademark Association (INTA) has rendered its support to Louboutin’s views, filing an amicus brief to that effect with the Court. In response, a large number of prominent US law professors have expressed support of Yves Saint Laurent’s position, arguing that Louboutin’s trademark registration was invalid.

As matters stand now, the legal position in the USA is that the use of a single colour in a product, including fashion products, may be registered as a trademark. However, the actual protection such trademark can enjoy may be negligible and, in fact, almost illusive.

For more details about trademark registration in the USA, including colour trademarks, please contact Claus Barrett Christiansen.

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