The trade mark wars for Louboutin continue, this time in an intriguing dispute in Belgium concerning the use of the iconic shoes on a poster for political advertising. Here’s what happened….
What are the facts behind the case?
Recently in Belgium’s Antwerp Court, Louboutin claimed that the Vlaams Belang party infringed its registered trade mark for the colour red (Pantone 18-0663TP) applied to the sole of shoes (Benelux Trade Mark No. 0874489) by producing a political advertisement condemning Islam, which showed a woman lifting up a black dress whilst wearing Louboutin’s red soled stilettos. Words were etched along her bare legs which marked potential skirt lengths, ranging from “Sharia compatible” at the ankle to “stoning” high up on the thigh. To view the advertisement, click here. The woman featured in Vlaams Belang’s advertisement was Anke Van Dermeersch, a former Miss Belgium and now senator of Vlaams Belang, who turned up to the Antwerp Court hearing wearing Louboutin’s iconic red soled stilettos.
Louboutin argued that the presence of its red soled shoes associated Louboutin with the advertisement, tarnishing the brand’s image. Although we are not experts in Benelux law (which comprises of Belgium, Netherlands and Luxemburg), it is likely that Louboutin brought its case under Article 2.20(1)(c) of the Benelux Convention on Intellectual Property (Trademarks and Designs) of 25 February 2005 (“Benelux Convention”). According to Article 2.20(1)(c) an owner of a trade mark is able to prevent any third party, without its consent, “from using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark”.
The Antwerp Court agreed with Louboutin and the judge ordered the removal of Vlaams Belang’s advertisement within 24 hours.
What is the factual difference between this and other Louboutin cases?
This is not the first time Louboutin has gone to battle to protect its trade marks. Louboutin has previously commenced proceedings against a range of fashion brands that have adopted the red sole look (discussed in our posts here and here). However, unlike the other cases, the issue in the Antwerp Court was not about another fashion brand selling a similar good, but with a woman being photographed wearing them. The aim of the Belgium advertisement was not to sell the red soled stilettos, or make a profit from featuring them in its advertisement, but rather to protest and convey a political message.
How does this make the Belgium analysis more complex?
In the Belgium case, it is questionable whether Louboutin’s red soled stilettos were being used to ‘distinguish the goods or services’ because the aim of the advertisement was not to promote a good or service, but rather to convey a political message. Therefore, under Article 2.20(1)(c) of the Benelux Convention (explained above), the question for the Antwerp Court would have been whether the use of the Louboutins took unfair advantage of, or were detrimental to, the distinctive character or the reputation of the trade mark. We query whether using shoes the way the advertisement did is necessarily detrimental to the character or reputation of the brand. Perhaps it was more likely to be taking an unfair advantage, as Louboutin’s trade mark was being used without its permission in political activities it had chosen not to endorse.
For instance, how would this law apply to the scenario of, say, a real life protestor being photographed at a demonstration holding her own luxury branded handbag, with the photo then splashed across Belgium’s magazines and newspapers. If the luxury brand had a registered trade mark for the print on its bag, what trade mark rights could the luxury brand assert against the protestor, and should it be permitted to do so? This scenario seems removed from what in Australia we understand Trade Mark Law is intended to protect.
How might the law apply if this case were bought in Australia?
Although Louboutin has a registered trade mark for its red soled shoes in Australia (Trade Mark No.1352410), we query whether an Australian Court would have reached the same conclusion as the Antwerp Court due to the apparent differences in our trade mark laws.
In Australia, section 120 of the Trade Marks Act 1995 (Cth) provides that a trade mark infringement will occur if a person uses, “as a trade mark”, a sign that is substantially identical with, or deceptively similar to a registered trade mark. If a mark is considered ‘well known’, infringement will occur if the use of the famous mark indicates a connection between the trade mark owner and another person’s goods or services. Although the red soled stilettos are a striking feature of Vlaams Belang’s advertisement, one must test whether such use was in a trade mark sense. After all, this was not a case of a trade rival using the red soled trade mark on shoes other than Louboutins such that people might become confused about source. Rather, it appears the featured model was simply wearing Louboutins, and was photographed in this manner.
Perhaps the more appropriate claim in Australia would be under section 29(h) of schedule 2 of the Competition and Consumer Act 2010 (Cth), which states that a person must not, in trade or commerce, “make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation it does not have”. To satisfy this provision, Louboutin would need to show that the advertisement had been made in the course of a trading or commercial relationship, or that it had acquired a trading or commercial character (Concrete Constructions Pty Ltd v Nelson (1990) 169 CLR 594). Interestingly, in Village Building v Canberra International Airport, representations made to the public as part of a political campaign did not possess the requisite commercial character. As the aim of the Belgium advertisement was to convey a political message, it is questionable whether it was done in ‘trade or commerce’.
The advertisements have now been changed, with a parliamentary leader of Vlaams Belang tweeting a revised poster shortly after the Antwerp Court’s decision (below), showing the same woman lying down, with seemingly identical shoes, except now with yellow soles rather than Louboutin’s iconic red.
Rechtbank verbiedt 'Vrijheid of islam'-affiche omwille v/ gebruik Louboutin-schoenen! Nieuwe affiche is al klaar! pic.twitter.com/44e0WgGRkK
— Filip Dewinter (@FDW_VB) October 14, 2013