13 September 2012

Louboutin's Sole Relief

The long awaited judgment from the Second Circuit of Appeals in the Louboutin v Yves Saint Laurent case has recently been published.

The decision has overturned, in part, Judge Marrero's earlier decision on whether Louboutin could use its trade mark red lacquered sole to prevent the sale of Yves Saint Laurent's red-soled red shoes.

In April last year, Louboutin – famous for his red- lacquered soled women’s shoes sued Yves Saint Laurent (YSL) for trade mark infringement. YSL sold a completely red shoe as part of its Tribute, Tribtoo, Palais and Woodstock ranges which included monochrome coloured shoes (i.e. red sole, red shoe; purple sole, purple shoe etc). In an earlier decision, Louboutin’s request for an injunction was denied.

The Appeal Court’s decision held that Louboutin's trade mark had in effect acquired distinctiveness through use and that Louboutin was entitled to relief where the red sole contrasted with the remainder of the shoe. As YSL's shoe was monochrome the Court declined to prohibit the use of red lacquered soles ‘in all situations’.

The question everyone will now be asking is how much of a contrast must there be between the sole and the upper of the shoe for a shoe to infringe Louboutin’s registered trade mark?

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