YSL and Christian Louboutin both claim victory in trademark case

Who is the real winner in the battle of the red soles YSL and Christian Louboutin both claim victory in trademark battle

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UPDATED:

13:38 GMT, 7 September 2012

Yves Saint Laurent say they are 'extremely satisfied' with the New York court of appeal's decision to allow them to continue selling monochromatic red shoes.

The French fashion house have released a statement clarifying reports that Christian Louboutin had won the latest chapter in the legal battle between the two companies over red soles.

Last year Louboutin sued the French brand over pair of 'copycat' red
soled shoes from YSL's 2011 resort collection, but a US federal judge
rejected the claims.

Christian Louboutin heels

Battle: TheCourt of Appeals in Manhattan ruled that the distinctive red soles of Christian Louboutin shoes are entitled to trademark protection earlier this week

YSL Tribtoo

YSL Tribtoo

Red rival: YSL say they are 'extremely satisfied' that they can continue to produce 'monochrome' versions of their Tribtoo platform pumps

The case was subsequently referred to the appeals court after a New York
federal judge ruled that Louboutin had exclusive rights to red soles, but dismissed claims that YSL's all-red shoes were an infringement of Louboutin's mark.

Although the ruling stresses that Louboutin's shoes are entitled to trademark protection, an exception to the rule is when the shoe itself is red as well. In that instance, a rival may match the color of the sole to the color of the shoe.

This allows YSL to continue to produce 'monochrome' versions of its Tribtoo platform pumps.

Seeing red: Designer Christian Louboutin says he should own the trademark for red-sole shoes because he invented them

Seeing red: Christian Louboutin has been fighting to trademark his red-sole shoes

Victory: Zara have won the right to sell their red-soled heels, left, which Louboutin said copied their Yo Yo slingbacks, right

Victory: Zara have won the right to sell their red-soled heels, left, which Louboutin said copied their Yo Yo slingbacks, right

Victory: Last year Zara won the right to sell their red-soled heels (left) which Louboutin said copied their Yo Yo slingbacks

'The judge recognised the reputation of
Louboutin red sole characterized by a contrast with the rest of the
shoe, which has never been the case with any Yves Saint Laurent shoe,'
said a spokesperson for YSL in an official statement.

'Indeed, this has always been the position of YSL since the beginning of the case and it was cited by the judge of appeal in support of his reasoning.'

However Louboutin are also claiming victory, with the designer's lawyer Harley Lewin telling Reuters that the ruling will enable the company 'to protect a life's work as the same as embodied in the red sole found on his women's luxury shoes'

The U.S. Patent and Trademark Office in 2008 had granted the trademark protection to Louboutin.

A LEGAL FIRM EXPLAINS THE COPYRIGHT RULING

Are Yves Saint Laurent seeing red after a New York Court held that Christian Louboutin's trade mark of a lacquered red sole on footwear was entitled to trade mark protection

The law recognises that, in the right context, a single colour can become distinctive of particular goods or services – such as purple for Cadbury's chocolate, or green for BP service stations.

But it is all about context – in the right situation, red might be associated exclusively with London buses, but nobody would think a red pillar box was connected with London buses.

So the New York court held that, in the right situation, a lacquered red sole on footwear was associated exclusively with Christian Louboutin and they were entitled to trade mark protection – but it also held that it was the flash of the red sole (on a shoe of a contrasting colour) that was an important factor in making this association.

So the New York court held that Christian Louboutin could not prevent YSL from selling their monochrome red shoe (which, even though it had a red sole, did not give the impression of a shoe with a red flash).

So, as an overall comment, a single colour such as that used for the sole of a Christian Louboutin can distinguish the goods from those of competitors – but whether it will depends on the context in which it is used. In this case, as part of a monochrome red shoe, it was not distinctive.'

Ian Wood, Partner in Intellectual Property at Charles Russell LLP

Louboutin has applied glossy vivid red to the outsoles of women's shoes since 1992.

The shoes have been worn by a host of stars, such as Sarah Jessica Parker, Scarlett Johansson and Halle Berry, and sell for upwards of $700 a pair.

Last year Louboutin sued lost a lawsuit against Spanish brand Zara after claiming that an open- toed red-soled shoe it was selling for 40 was similar to its Yo Yo style.

A French court ruled that Zara’s cut-price shoe could not be confused with that made by the high-end designer and the Cour de Cassation – the final court of appeal – upheld the decision