Louboutin sues over red sole and ‘distinctive’ spikes
Latest lawsuit cites both trademark and patent infringement | Complaint follows other lawsuits filed worldwide by the luxury brand in recent years | Louboutin GC’s “rollercoaster ride” to safeguard signature mark.
Christian Louboutin is once again striding into court over its distinctive red sole after filing a lawsuit in the US, which also alleges patent infringement of the luxury brand’s spiked trainers.
The French fashion house lodged a 27-page complaint against Maryland-based Vinci Leather at the US Southern District Court of New York on May 5 on the grounds of alleged trademark and patent infringement, as well as deceptive trade practices.
‘Coveted symbols’
The shoe designer outlines how ever since it first introduced the red footwear outsole in 1992, the mark has become a “coveted symbol of good taste”.
Nearly three decades later, Louboutin debuted its ‘ Loubishark’ line of shoes in autumn 2020, featuring a sole reminiscent of shark teeth. Protected by two US design patents, numbers D934,539 S, and D934,536 S, the designer contends that spikes have subsequently become a mainstay of the brand’s iconic shoe styles.
The complaint accuses Vinci of manufacturing and marketing knock-off in “a blatant attempt” to trade off the renown of the brand, and of ignoring its cease and desist letters.
According to the lawsuit, Vinci’s brands, the ‘Musumusu’, ‘Ege’, and ‘Maple’ shoes all infringe Louboutin’s red-sole mark, while its ‘Zibo’ and ‘Winlux’ shoes infringe its trade dress.
Notably, the complaint further insists that ‘Efes’ shoes infringe the trade dress of Louboutin’s spiked sneakers.
Distinctive spikes
Louboutin has incorporated spikes into sneaker designs in recent years, adds the complaint. It goes on to insist that the overall appearance and particular combination of elements of the spiked sneakers make them distinctive, because “conically shaped spikes are applied to the toe bed covering substantially the entire toe bed area, with the spikes positioned in rows and columns forming a substantially regularly spaced spike pattern”.
This means, Louboutin says, that the trade dress has acquired a ‘secondary meaning’, becoming distinctive and “instantly recognisable to the public” as a Louboutin brand. The company has a long and eventful history of lawsuits concerning its marks.
Last month, the Appellate Court of Sao Paulo sided with Louboutin over a complaint regarding the red sole, even though there is no trademark registration for the mark granted by the Brazilian Industrial Property Law (BPTO).
Commenting on that case, Marianna Furtado de Mendonça, partner at Montaury Pimenta, Machado & Vieira de Mello, noted that the strength of Laboutin’s mark had transcended its lack of protection in the country.
“The Louboutin shoes are known worldwide for their trade dress, mainly characterised by the famous red sole. The decision issued by the Appellate Court of Sao Paulo was more than correct, as it decided to protect the rights of holders of foreign and well-known trademarks.
“Luxury brands are often victims of counterfeiting in countries that lack such registration, so this consolidates the protection given by BPTO to the well-known trademark.”
‘A rollercoaster ride’
Speaking at the International Trademark Association annual meeting in May last year, Louboutin group general counsel Xavier Ragot described the efforts to protect its signature mark as a “rollercoaster ride”.
He explained how the Louboutin brand had faced, and overcame, critical hurdles in the US
Back in 2011, the brand sued designer Yves Saint Laurent for the infringement of the red sole shoes, but US District Judge Victor Marrero at the US District Court for the Southern District of New York questioned the validity of the trademark.
But according to Ragot, the brand’s fortunes changed a year later when the US Court of Appeals for the Second Circuit held that Louboutin could retain the exclusive right to use the colour red on the bottom of its shoes whenever the outer portion of the shoe is any colour besides red.
“That decision was a big game-changer for us, and helped us to enforce our rights not only in the US, but also in Europe. We managed to put in place a comprehensible enforcement programme and we managed to remove many of the counterfeit red sole products that were available in the marketplace,” he explained.
“We now have a strong set of judicial decisions that we can put forward to pursue infringement claims.”
Loss in Japan
But the brand is not always victorious—Christian Louboutin failed to convince a Tokyo court in April 2022 that a Japanese shoe company infringed its red sole.
The decision, made by the Tokyo District Court, dismissed Louboutin’s case that the company Eizo had infringed its IP and violated unfair competition law.
The court also ruled that the red sole did not carry satisfactory secondary meaning to fulfil distinctiveness requirements to act as a trademark.
