THE LOUBOUTIN V. YSL RED SOLE DISPUTE: FASHION, LAW, AND THE LIMITS OF TRADEMARK PROTECTION

The legal battle between Christian Louboutin and Yves Saint Laurent (YSL)[1] over the iconic red soled shoe is a landmark case at the intersection of fashion, intellectual property, and brand identity.

This dispute not only captivated the fashion world but also raised fundamental and crucial questions about the extent to which a single colour can be protected as a trademark in the fashion industry and Intellectual Property Law as a whole. The outcome has had significant implications for designers, brand owners, and the broader legal landscape governing trademarks in creative industries.

1.0  THE RISE OF THE RED SOLE

Christian Louboutin, a French designer, revolutionised luxury footwear with his signature red lacquered soles, introduced in the early 1990s. Over time, the red sole became synonymous with the Louboutin brand, symbolising exclusivity, status, and high fashion, thus acquiring a secondary meaning.

In 2008, Louboutin secured a U.S. trademark for the red sole, described as a “lacquered red sole on footwear.”[2] This registration marked a significant milestone, as it recognised a single colour, applied in a specific manner, as a source identifier in the world of fashion.

1.1  THE DISPUTE AND TRIGGER

The conflict erupted in 2011 when YSL launched a collection of monochromatic shoes, including a model entirely in red, upper, insole, heel, and outsole. Louboutin claimed that YSL’s use of a red sole, even as part of an all-red shoe, infringed on its trademark and would likely cause consumer confusion, diluting the distinctiveness of the Louboutin brand.[3]

1.2  LEGAL CLAIMS AND COUNTERCLAIMS

Louboutin claimed that the red sole had acquired “secondary meaning,” which would be, in the Ugandan Context, acquired distinctiveness through use[4], signifying the product's origin in the consumers' minds.

The brand sought an injunction to prevent YSL from selling shoes with red soles, asserting trademark infringement, dilution, and unfair competition, and on the other hand, YSL counterclaimed, challenging the validity of Louboutin’s trademark.

They argued that no fashion designer should be allowed to monopolise a single colour, especially in an industry where colour is a vital element of design and creativity. YSL also pointed out its own history of producing monochromatic shoes, including red soled models, dating back to the 1970s.

1.2.1        DISTRICT COURT RULING

In August 2011, the U.S. District Court for the Southern District of New York denied Louboutin’s request for a preliminary injunction. The court questioned whether a single colour could serve as a trademark in the fashion industry, suggesting that granting such protection could be anti-competitive and hinder artistic freedom.

The judge concluded that Louboutin was unlikely to succeed on the merits, as the red sole was deemed “functional” and not inherently distinctive in fashion.[5] However, the good judge happened to have misdirected himself on principle.

1.2.2        APPEALS COURT DECISION

On appeal, the Second Circuit Court of Appeals took a more nuanced approach. The court acknowledged that a single colour could, under certain circumstances, acquire distinctiveness and function as a trademark, provided it had achieved secondary meaning or acquired distinctiveness through use in the marketplace. The court found that Louboutin’s red sole had indeed become a distinctive symbol identifying the brand.

However, the court limited the scope of Louboutin’s trademark rights in that the protection applied only when the red sole contrasted with the colour of the upper part of the shoe, not when the entire shoe was red.

This distinction was very crucial. The court reasoned that because YSL’s shoe was monochromatic red, including the sole, it did not infringe on Louboutin’s trademark, which was defined by the contrast between the red sole and a different colored upper.

Thus, both parties could claim a form of victory in a somewhat win-win situation where Louboutin retained trademark rights over contrasting red soles, while YSL was free to produce all red shoes.

2.0  BROADER LEGAL AND INDUSTRY IMPLICATIONS IN THE AREA OF TRADEMARK LAW PERTAINING TO SINGLE-COLOUR MARKS

The case highlighted the complexities of protecting single colours as trademarks, especially in industries where colour is a fundamental design element.

U.S. trademark law allows for the protection of non-functional, distinctive marks, including colours, if they have acquired secondary meaning or, as we say in Uganda, it has acquired distinctiveness through use. However, courts remain wary of granting overly broad monopolies that could stifle competition and creativity.[6]

The Louboutin decision clarified that:

1. A single colour can be protected as a trademark in fashion, but only if it is used in a non-functional, distinctive manner and has acquired secondary meaning.

2. Trademark protection is context-dependent, with courts scrutinising how the colour is used and whether it serves a source-identifying function or is simply ornamental or functional.

   
   

2.1  FUNCTIONALITY DOCTRINE

A key issue was whether the red sole was “functional.” Trademark law does not protect features that are essential to the use or purpose of the article or that affect its cost or quality. The court found that while colour can be functional in some contexts (e.g., safety equipment), in the case of Louboutin, the red sole was primarily a branding tool, not a functional feature.

The functionality doctrine in trademark law serves as a critical safeguard to ensure that trademark protection does not extend to features of a product that are essential to its use or purpose, or that affect its cost or quality. This doctrine prevents businesses from using trademark law to gain a perpetual monopoly over utilitarian or functional aspects of their products, which should remain available for all competitors to use.[7]

For example, if a particular product shape or colour is necessary for the product to perform its function or gives it a competitive advantage unrelated to brand identity, it cannot be protected as a trademark. Courts have emphasized that the doctrine maintains a clear boundary between trademark and patent law where trademark law protects source-identifying features, while patent law, with its limited duration, is the correct avenue for protecting functional innovations.

By enforcing the functionality doctrine, courts promote fair competition and prevent the misuse of trademark rights to stifle innovation and market entry.[8]

2.2  SECONDARY MEANING

The court’s finding that Louboutin’s red sole had acquired secondary meaning was based on extensive evidence of consumer association between the red sole and the Louboutin brand, including advertising, media coverage, and sales data. However, this secondary meaning did not extend to all uses of a red sole but only to those where the red sole contrasted with the upper, reinforcing the importance of context in trademark law.

A trademark must act as an indicator of origin, denoting from whom the goods or services came rather than what they are, that is why in Canon Kabushiki Kaisha v Metro Goldwyn - Mayer Inc[9] court noted that the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer.

A trademark that is not inherently distinctive, such as a descriptive or generic term[10] can still be registered and protected if it has acquired distinctiveness through extensive use in the marketplace, a concept often called "secondary meaning".

This means that, over time, the public has come to associate the mark specifically with the goods or services of one provider, rather than with the product or service in general, like the Louboutin red soles.

To prove acquired distinctiveness, evidence such as long term and exclusive use, significant advertising, sales figures, consumer surveys, and media coverage is often required to show that the mark is recognized by consumers as identifying the source of the product or service.

Once acquired, this distinctiveness allows even a previously non distinctive mark to enjoy robust legal protection similar to inherently distinctive trademarks such as was the case in Nairobi Java House v Mandela Auto Spares Ltd, when the word Java(s) was in contention.[11]

3.0  INDUSTRY REACTION AND ONGOING DEBATE

The case sparked intense debate within the fashion industry. Critics argued that allowing a single designer to monopolise a colour could limit creative freedom and set a dangerous precedent for other brands seeking to protect basic design elements. Supporters countered that strong trademark protection is essential for maintaining brand identity and rewarding innovation.

Since the ruling, Louboutin has continued to enforce its trademark against brands that use contrasting red soles, but the decision has provided a clear framework for competitors that, as long as the red sole is part of a monochromatic design, it does not infringe on Louboutin’s rights. This balance has allowed for both brand protection and continued innovation in fashion.

3.1  KEY TAKEAWAYS

Distinctiveness is critical:  Brands seeking to protect non-traditional marks, such as colours, must demonstrate that the mark has acquired secondary meaning and is not functional.

Scope matters: Trademark rights may be limited to specific uses or contexts, as seen in the distinction between contrasting and monochromatic designs.

Enforcement strategy: Overly aggressive enforcement can backfire if courts perceive the trademark as anti-competitive or overreaching.

4.0  CONCLUSION

The Louboutin v. YSL case has influenced how brands approach trademark protection for colours and other non-traditional marks. It has also underscored the importance of clear, consistent branding and the need for careful legal strategy when seeking to protect or challenge such marks.

The dispute is a defining moment in the evolution of trademark law in fashion and the Law in general. It affirmed that distinctive, non-functional uses of colour can be protected, but set important limits to prevent anti-competitive outcomes.

The case serves as a guide for designers, brands, and legal practitioners navigating the complex terrain of intellectual property in creative industries. Ultimately, it reflects the ongoing tension between protecting innovation and preserving the freedom to create, a balance at the heart of both fashion and intellectual property law.

By Edgar Okitoi

TMT Law Enthusiast 

List of References

[1] Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012)

[2] The Fight for Red: Fashion Statement or Protected Trademark? <https://natlawreview.com/article/fight-red-fashion-statement-or-protected-trademark> [Accessed on 24th May 2024]; Christian Louboutin and the Fight for Your Red Sole! <https://cdas.com/christian-louboutin-and-the-fight-for-your-red-sole/> [Accessed on 24th May 2024]

[3] Louboutin v. Yves Saint Laurent: The High Stakes High Heels <https://cdas.com/louboutin-v-yves-saint-laurent-the-high-stakes-high-heels/>  [Accessed on 24th May 2024];; These Heels Were Made for Walking: Christian Louboutin S.A. v Yves Saint Laurent America Inc. - TheCourt.ca <https://www.thecourt.ca/these-heels-were-made-for-walking-christian-louboutin-v-yves-saint-laurent/> Accessed on 24th May 2024; The Fight for Red: Fashion Statement or Protected Trademark? <https://natlawreview.com/article/fight-red-fashion-statement-or-protected-trademark> [Accessed on 24th May 2024]

[4] Wave Ruling, Opposition to TM Application No. 74414: The Registrar of Trademarks explicitly stated that where a mark lacks inherent distinctiveness, registration will depend on acquired distinctiveness through use, referencing Section 9 of the Trademarks Act, 2010. The decision discusses the need for evidence of use and recognition in the market for a mark to be registrable on this basis

[5] Louboutin's Trademark Suit Against Yves Saint Laurent <https://digitalcommons.law.ou.edu/cgi/viewcontent.cgi?article=1022&context=okjolt> [Accessed on 24th May 2024]

[6] In Dispute: Louboutin v. YSL | Practical Law - Thomson Reuters <https://uk.practicallaw.thomsonreuters.com/8-518 5867?transitionType=Default&contextData=%28sc.Default%29> [Accessed on 24th May 2024]

[7] Bainbridge, Intellectual Property (10th edn, Pearson 2022) 695–697.

[8] Understanding the Doctrine of Functionality in Trademark Law https://www.etblaw.com/the-doctrine-of-functionality-in-trademark-law/

[9] Canon Kabushiki K v Metro Goldwyn Mayer Inc [1998] ECR 1, para 28.

[10] Nairobi Java House Ltd v Mandela Auto Spares Ltd Civil Appeal No.13 of 2015, where Justice Madrama analysed generic and descriptive words for purposes of trademark protection.

[11] Ibid.