Louboutin: the shoemaker finally gets the monopoly on the red soles!

While Christian Louboutin is in turmoil for objecting to the fact that his shoes are worn by reality-show contestants...the ECJ ruled on the fate of the red-soled pumps. For 5 years, Louboutin had been claiming the exclusivity of the scarlet soles, victims of their success. Indeed, many competitors use this feature for their own heel shoes.  The decision just came down. Ending a lawsuit that began in 2013, the European Court of Justice (ECJ) ruled that the colour red on the sole of a shoe is a "position mark". Christian Louboutin had the idea of its famous soles in 1993 when the "Thought" pump model was created. Inspired by Andy Warhol and pop art, Louboutin had then borrowed his assistant's nail polish to lacquer the soles. Let's go back to this dispute, which is full of twists and turns.  

Louboutin versus Van Haren

In 2012, the Dutch company Van Haren will market shoes with red soles. Louboutin does not look favourably upon it and initiates an infringement action in the Dutch courts. He is asserting a trademark registered in the Benelux in 2013. It combines high-heeled shoes with a red sole: According to Van Haren, the combination registered by Louboutin is contrary to European trademark law. The Hague Court in the Netherlands, avoiding making a decision, chose to turn to the ECJ.  

The red sole monopoly: a complex issue

For the Netherlands court, the mark at issue is inseparably linked to a shoe sole. However, it does not know whether such a position mark may also encompass colours. Already in 2012, the Court of Cassation French had stated that neither the shape nor the colour of the red sole was protectable as a trade mark. Christian Louboutin then blamed Zara for imitating her famous scarlet sole. The Advocate General of the ECJMaciej Szpunar, also believes that Louboutin does not have exclusivity on the red soles. Indeed, it considers that " a trademark that combines colour and shape may be refused or cancelled on the grounds provided for in European Union trademark law. » He doubts above all "that the color red may fulfill the essential function of the mark"... (identification of the origin of the product).   For him, other shoemakers are allowed to make red-soled heels. However, this opinion is only advisory: it is not a decision of the Court.  

A high heel with a red sole can be a mark

On 12 June, the European judges made their decision. The distinctive sign " consisting of a colour applied to the sole of a high-heeled shoe". is not "consisting exclusively of form". Thanks to this decision, which is binding on Hague judges, Christian Louboutin wins his case in the Netherlands. His brand also emerges strengthened. Indeed, this judgment could be taken up throughout the European Union and allow Louboutin to win the dozen lawsuits currently in progress. On the occasion of this dispute, the European judges were able to rule on the importance of the distinctiveness of the mark. A fundamental criterion, regardless of the type of brand concerned.