It appears that fashion's most infamous case has finally come to a close. Both parties seemingly came away from the Appeal decision satisfied: Christian Louboutin's trade-mark registration remained valid and exclusivity was maintained with respect to red soles with contrasting shoes; Yves Saint Laurent was found not to infringe with respect to its red shoes, red soles colour configuration.

If you want to read up on the Christian Louboutin v. Yves Saint Laurent case, you'll find a full summary �����Ի���.

As of today (October 16), Yves Saint Laurent has filed submissions with the Appeals court seeking it dismiss its various counterclaims against Christian Louboutin.  It appears that both parties are intent on putting this matter behind them and continue to focus on their respective businesses.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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First and foremost, the Appeals Court found fault in the District Court’s holding that a single color cannot serve as a trade-mark in the fashion industry. (I can hear Tiffany’s breath a sign of relief). Second, the Appeals Court confirmed that Christian Louboutin has acquired secondary meaning in the red-soled shoe. However, here is the crux of the decision that lead to co-existence in the marketplace. Christian Louboutin has only acquired secondary meaning of the red-soled shoes in respect of shoes that are in stark contrast with the red-soles. So, Yves Saint Laurent’s use of red-soles on red shoes is not problematic. As such, the Appeals Court has ordered that Christian Louboutin’s trade-mark registration be amended to reflect this limitation in the scope of protection, specifically:

“…to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe”.

It will be interesting to see if this judgment has wider implications and serve as a tool to competitors looking to limit a wide scope of brand protection secured by heavy hitting industry players.

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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In the case of , appellate court justices José Cabranes, Chester Straub, and Debra Livingston reversed in part the lower court’s decision that Louboutin could not trademark the colour red on the grounds that a colour can serve as branding and thus have a “secondary meaning in the public eye.” See the IPilogue’s previous coverage of this issue , , and .

“We hold that the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error,” the judgment reads. “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.”

This comes after the lower court denied Louboutin’s request for an injunction that would require rival fashion house Yves Saint Laurent (YSL) to stop manufacturing its . Though the appeals court allowed Louboutin a partial win, it did uphold the lower court’s finding that an entirely monochromatic red shoe from a competitor does not infringe upon Louboutin’s trademark rights.

Under the Lanham Act, which sets out U.S. trademark law, the “.” As such, it seems reasonable that Louboutin would be granted sole authority to manufacture a shoe bearing its signature style. However the court limited Louboutin’s “Red Sole Mark” as per section 37 of the Lanham Act, which gives the court power over trademark registration. This means the Red Sole Mark prescribed by the court is limited “to a red lacquered outsole that contrasts with the color of the adjoining ‘upper’.” In other words Louboutin cannot trademark the colour red, nor can they claim a particular shade of red as its logo--which still allows for the possibility of . That means competing brand YSL has the right to manufacture its Louboutin look-alike because it does not contravene the Red Mark Sole limit as set out.

In Canada, colour can be claimed as a feature of a particular trademark and thus protected if that specific colour is held to be distinctive; colour alone cannot satisfy the application for a trademark and no entity can claim an exclusive right to it. This follows Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (1987) in which the Federal Court of Canada found that colour, in conjunction with other defining features such as shape and size, could qualify as intellectual property.

Similarly, the Louboutin judgment cited in which the court found that Jacobson’s green and gold-coloured dry cleaning pads infringed on Qualitex’s original trademarked product. The 1995 judgment stated that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark” because it “can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function.” This means Louboutin cannot claim exclusive rights to shoes manufactured in red specifically because the colour of the entire shoe is not a defining feature of it.

This triumph-in-part could mean further ambiguity in the interpretation of trademark law; both Louboutin and YSL won in part for the right to manufacture shoes of a certain style. This means that by analogy either interpretation could be used to support a future case for/against a particular trademark by applying colour as a defining feature, or to defend a claim of unfair competition.

Since trademarks must adhere to national legislation, jurisdiction is also of increasing importance. By logic of the Louboutin case, would a claim for trademark rights filed in a jurisdiction with a more narrow interpretation of the law adhere to this decision? And if so, could that lead to a transnational approach to trademarks that pays heed to how quickly information travels in the digital age? While these questions are merely speculative, they do suggest a plausible change in the way trademarks are governed.

Terrine Friday is a Graduate Student Member of IP Osgoode and an LLM candidate at Osgoode Hall Law School, where she researches issues related to intellectual property and human rights.

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I have Christian Louboutin’s dispute with Yves Saint Laurent in the US, with respect to YSL’s use of the red-soled shoes.  Christian Louboutin suffered a blow when he a preliminary injunction against YSL’s use of the red-soled shoes.  The decision went a step further and called into question the registrability of Christian Louboutin’s trade-mark or whether any color can be registered in the fashion industry.  (This decision is currently being appealed).  Needless to say, some parties were less than delighted with the decision and we saw Tiffany and INTA put in their two cents.

Malheuresement, Christian Louboutin has suffered another blow.  Christian Louboutin took the high-street store Zara to court over its use of red-soled shoes in France.  Although Christian Louboutin initially won, Zara appealed on the basis that Christian Louboutin’s trade-mark registration was too vague (i.e. the registration did not include a Pantone color claim).  Christian Louboutin was unsuccessful in appealing Zara’s victory.  The French court of appeal recently issued its decision in favour of Zara.  Adding insult to injury, Christian Louboutin was also required to pay some of Zara’s legal costs as compensation.  This decision does not extend beyond France.  In the meantime, Christian Louboutin is attempting to mitigate any further damage to its brand by filing a new trade-mark application that has a narrower and more specific color claim.

Christian Louboutin’s struggle to maintain its brand monopoly has piqued a lot of interest from lawyers, consumers and the media.  I have had the opportunity to discuss this on many occasions and I am always fascinated at how polarizing the debate is.  Whereas some believe Christian Louboutin’s position to be ridiculous (generally, these are not trade-mark professionals or fashionistas), others strongly believe that Christian Louboutin is “famous” for its red-soled shoes and should reap the benefits.  To a large extent, this goes back to the age-old debate:  Is fashion art?  Or is fashion innately functional?  In an industry where trends are a central concept, is infringement acceptable?  If one shoe is sold at the $1,000 starting point, can there really be confusion with a similar shoe that is sold at the $50 starting point?  If the function of intellectual property laws is to reward ingenuity, why is fashion design piracy more acceptable?

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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