“In 1993, I grabbed a bottle of red nail polish, and it became a symbol.”
– Christian Louboutin.
The fascinating backstory of Christian Louboutin’s trademark red sole is based on a simple but ground-breaking concept. Inspired by pop artist Andy Warhol’s “Flowers,” Louboutin thought that his prototype lacked something in 1993. Seeing an assistant paint her nails red, he thought it would be a good idea to change the shoe’s appearance by adding the same colour to the sole. This audacious choice quickly became a defining characteristic of Louboutin’s designs, signifying exclusivity, passion, and luxury.
It became crucial to preserve this special quality as a trademark to preserve Louboutin’s unique identity and prevent competitors from weakening the distinctiveness of the brand and damaging its reputation. In addition, upholding Louboutin’s history, securing the red sole’s trademark protection would also highlight the importance of innovation in the fashion industry.
A trademark as we all are aware is a mark or a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. A specific form of trademark, relevant to Louboutin’s red sole – is a Trade dress, which describes how a product looks or is presented overall, including its packaging. It includes components including hue schemes, geometric patterns, and even workplace furniture arrangements. Fundamentally, trade dress is more than just appearance; it’s an effective instrument that tells customers where a product comes from, much like a trademark does with a name or logo.
Protection of trade dress is provided under the ambit of trade mark.
Critical Analysis
In 2008, to protect his work, Louboutin applied for trademark registration for the red shoe bottom (“Red Sole Mark”). The process of registering his trademark was not straightforward, the primary source of disagreement being the possibility of the colour red being distinctive enough to fulfill the category of being registered as a trademark.
Since 1995, firms such as UPS, T-Mobile, Tiffany & Co., and Home Depot have been able to safeguard their identity by obtaining single-color trademarks. It’s difficult to trademark a colour, though. A colour cannot just be ornamental; it must function as a source identifier, just like other trademarks. It must also have a “secondary meaning,” which verifies that the colour is strongly connected to the brand through widespread usage and marketing.
Furthermore, the colour cannot have a functional use. Cases such as amber-coloured mouthwash (which indicates flavour), purple sandpaper (which indicates grit size), and pink ceramic hip implants (which are a natural by-product of the components) have been denied due to this criteria. These illustrations show how trademark protection can be thwarted by even the smallest functional link.
In 2011, Louboutin claimed that Yves Saint Laurent’s creation of a red women’s high-heeled shoe with red uppers, red platform heels, and red soles violated its trademark. The retailer pursued legal action in European and American courts to protect its brand.
The brand’s trademark, according to the U.S. Court of Appeals for the Second Circuit, consisted of a red sole that contrasted with the rest of the shoe; in cases where the shoe was red throughout, there was no infringement.
Additionally, the Court restricted Louboutin’s trademark registration.
Louboutin filed multiple cases in Europe against manufacturers of women’s shoes with contrasting red soles. When the litigation was predicated on a narrow definition of registration—that is, contrasting red soles—it was successful.
The brand has successfully obtained several trademarks on its distinctive red soles in approximately fifty countries, including the United States, Australia, Canada, France, Russia, Singapore, the United Kingdom, and Switzerland quite recently.
Although obtaining a trademark in China as well as Japan is quite difficult. The National IP Administration of China argues that permitting trademarks with only one colour gives the trademark owner the excessive authority to the point where it could cause market disruption.
Whereas In Japan in 2015, the Japan Patent Office (JPO) first denied Louboutin’s application to register a trademark for its red-soled heels. Louboutin filed an appeal with the JPO’s Appeal Board after this denial. The appeal’s outcome was made public in June 2022, and the JPO once more rejected Louboutin’s mark. The outcome of the Appeal Board is probably related to Louboutin’s litigation against the Japanese shoe company Eizo. In 2018, Louboutin filed a lawsuit against Eizo for selling women’s shoes with red rubber soles. Under Japan’s Unfair Competition Prevention Law, Louboutin alleged that Eizo was violating its intellectual property rights and that the colour of the sole misled customers about the shoes’ origin. The court decided in Eizo’s favour, noting that red-soled women’s heels were widely available in Japan before Eizo’s shoes. Additionally, the court found that there was little chance that customers would confuse Louboutin’s shoes with Eizo’s because of the latter’s higher price tag, which would encourage cautious shopping and help them distinguish between the two brands.
When determining whether a single colour mark is registrable, the JPO looks at two primary factors: “balancing unfair restraint to competitors with benefits to brand owner if granted protection to the single colour mark” and the acquired uniqueness of the colour through considerable usage as a source indicator. The first aspect of the Louboutin appeal was a major factor for the JPO.
The JPO maintains that “registration is not permitted in principle for trademarks consisting of only a single colour,” while having denied Louboutin’s attempt to register his trademark.
Nevertheless, it will be registered if the use demonstrates that distinctiveness is generated. This does not imply that imitation brands will be allowed to proliferate, but the JPO might not protect if a brand is not very well-known in Japan.
Hence, businesses looking to defend their trademarks in Japan should be informed that global recognition and popularity probably don’t matter much if they aren’t as important in Japan.
Conclusion
Ever since its inception, Christian Louboutin’s iconic red sole has stood as a testament to his inventiveness and sense of luxury. In the fashion sector, preserving unique brand elements is crucial, as demonstrated by the difficult process of trademarking this iconic feature. All the same, Louboutin’s perseverance has gained recognition in many nations, even in the face of legal challenges and onerous procedures for trademarking a colour. This example demonstrates the strength of a daring design decision as well as the critical function that intellectual property protection plays in preserving a brand’s distinctive character in a crowded market. The red sole is not simply a trademark; it is evidence of the ingenuity and tenacity that propels high fashion worldwide.
Authors: Seema Meena, Rea Parikh & Viha Mehta