The story goes that over 20 years ago Louboutin painted red nail polish on the soles of a pair of his shoes and, since then, the Louboutin brand has become instantly recognisable by the red-coloured sole which is a key feature of Louboutin designs.
In 1997 Louboutin registered the “red sole” as a trade mark in the USA and has enforced the trademark against companies such as Payless Shoes which attempted to market and sell shoes with red soles.
More recently, YSL released a red shoe (which is completely red including the sole) as part of its 2011 spring-summer collection. Louboutin alleges that this particular shoe infringes its “red sole” trademark.
To consider these questions, it’s important to reflect on some of the key requirements under Australian law, as applied to the present case.
- YSL must be using the red sole as a trade mark (s 120(1) Trade Marks Act 1995 (Cth)). Here, the offending YSL shoes are completely red – both the upper shoe and the sole are red to give the shoe an overall or continuous red coloured look. Arguably, the red sole is part of the design aesthetic and is not being used by YSL as a badge of origin to connect the shoes with YSL.
- Interestingly, YSL has previously released shoes with coloured soles. In 2008 YSL released blue heels with a matching blue sole. This may help substantiate an argument that the red sole is being used by YSL as a design element rather than as a mark.
- The YSL mark must be substantially identical or deceptively similar to Louboutin’s registered mark (s 120(1) Trade Marks Act 1995 (Cth)). Here, one could attempt to point out the differences between the YSL and Louboutin shoes (with thanks to the Mail Online, photos of the Louboutin shoe and the YSL shoe can be viewed here). Some noticeable differences include that the red sole on the YSL shoe is a matte finish and unlike the Louboutin shoe is not lacquered or glazed (ie it doesn’t have the “nail polish” look). Also, the YSL shoe is completely red whereas the Louboutin design features only a red sole.
Louboutin is also suing YSL for common law passing off, arguing that YSL’s use of the red sole threatens to mislead the public and has impaired its ability to control the Louboutin brand. The flash of red from under the shoe when a woman walks down the street, red carpet or catwalk may cause the public to think twice about whether the shoe is in fact from YSL or Louboutin. It’s interesting that Louboutin has framed the passing off action broadly, in relation to the public and not consumers. This may be because a purchaser of high end shoes is likely to carefully consider the brand of shoes and therefore be less easily misled. Shoppers are also more likely to purchase such shoes in a YSL store, and they will be clearly branded as such (although there might be scope for error in a department store context).
Whether the public is likely to be misled is not so clear, and could give rise to some fascinating evidence. True it is, the red sole is a ‘signature’ of the Christian Louboutin brand. But is it truly a badge of origin to the public of the brand (which really does require that flash of red to be visible)?
Perhaps the relevance of the red soles is more subtle, in that the red sole delivers to the purchaser the sense of satisfaction, quality and cachet inherent in a Louboutin shoe? Whether or not such conduct could be regarded as unlawful will be interesting to see.