Orange County – Back on April 10, we posted a story about fashion designer Christian Louboutin’s trademark infringement complaint against Yves St. Laurent’s (YSL) use of similar red-soles in its shoe line. You can see the original post here: Red-Soled Shoes Trade Dress infringement. Recently, the two fashion powerhouses hashed it out in a New York courtroom.
The lawyer for Louboutin argued that the designer’s claim to fame has been due solely (pun intended) on the popularity of its red-soled shoes, worn by fashionistas and celebrities alike and that it has had “substantially exclusive use” of the trademark for 19 years. He added that his client is not “as YSL misleadingly argues, [trying] to claim a monopoly over the colour red…But when YSL ignores countless colour choices, including other reds, and apes the famous signature of the Louboutin brand, [it destroys] the goodwill painstakingly built in the Red Sole trademark.” He continued with, “Unless this court enjoins YSL, the floodgates will open, and the Louboutin business will be devastated.” Louboutin argued that if the court denies YSL the right to use bright red soles, the company will not suffer a significant aesthetic disadvantage because it will still be able to make its shoes “engaging” and “flirtatious” by using “even Louboutin’s red…on other, more visible parts of the shoe.”
Attorneys defending YSL argued back that their client has been using red as a signature colour since its inception in 1962 and even referenced the fact that King Louis XIV of France and Dorothy from The Wizard of Oz famously wore red-soled shoes. YSL’s defense team went on to question the validity of Louboutin’s Red Sole trademark, which was awarded a trade dress registration in 2008 by the USPTO, by asking whether any designer can monopolize one particular colour.
The YSL defense attorney stated, “We are unaware of any case in which a court has upheld trademark protection to a mark consisting solely of a single colour on a portion of an article of apparel.” His argument was further exacerbated by a statement from Giancarlo Giammetti, fashion designer Valentino’s honorary president, which said that if any designer should have a monopoly on red, it should be Valentino.
We think that the trade dress registration is a good one. The judge’s verdict is expected any day now.