The red soled high heels of French designer Christian Louboutin have been gracing the red carpet since 1992 and recently saw further attention from Cardi B’s track “Bodak Yellow.” A favorite of celebrities and Real Housewives alike, the CL brand has become known for its iconic color”and not just any shade of red, but a very particular scarlet called Pantone 18 1663TP. These red-soled beauties range in price from $695 for a Simple Pump to $2,995 for Decollete 554 Strass. Much of the going price for these shoes is how easily it is to distinguish them from other heels as well as a sense of sophistication and status.
It is not surprising, then, that other shoemakers and fashion houses would similarly seek to use the same red sole. In 2012, CL sued a Dutch retail chain for doing just that. Now, the European Union’s top court has ruled that the use of the iconic red color means that the shoes can be trademarked. Traditionally, EU law prohibits the trademark of products with common shapes, such as the soles of shoes. However, the court reasoned that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red color covered by the registration. While the court in The Hague will now deliver the final ruling on the matter, it is clear that the favorable EU decision will help guide The Hague. Congratulations to Maison Christian Louboutin.
What about trademarking color in the U.S.? It’s Possible, but Limited
CL had previously filed an infringement suit against fellow design house Yves Saint Laurent for selling a high heel that was red throughout the shoe, including the sole. First, the appellate court, relying on the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), found that the red sole color is protectable as a trademark because it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Qualitex concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”
Further, the court found that the red sole trademark had acquired secondary meaning which is required to show that a single color has become distinctive. Here, the red sole symbolizes a tie to a luxury brand providing status, quality, elegance, and position that has been maintained by CL for many years.
The Court, however, proceeded to then modify CL’s trademark registration for any shoe with a red sole to only apply with red, lacquered outsole with a contrasting upper of the shoe: “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand, and is therefore a distinctive symbol that qualifies for trademark protection.” In other words, the trademark excludes any red shoe with a red sole.
The case calls to mind other fashionable products that have sought protection, such as Burberry’s signature plaid trenchcoat or Converse’s Chuck Taylor shoes. Both items are trademarked. To further note the limited protection however, consider Tiffany’s trademark on their particular shade of blue. It’s important to understand that they only own that blue in situations where it could be confused with their products. Tiffany only owns “robin’s egg blue” for its boxes and bags.
