In its latest salvo, YSL called Louboutin’s appeal “worse practice” and said it should be rejected because the designer “cannot show irreparable harm; is unlikely to succeed in overcoming YSL’s fair use defense; and is unable to establish secondary meaning or consumer confusion.”
Louboutin first filed its complaint that YSL was infringing on its trademark, registered in 2008, by making red-soled shoes and moved for a preliminary injunction against the French fashion house on April 7, 2011. But on Aug. 10, the District Court denied Louboutin’s motion on grounds that Louboutin is unlikely to overcome YSL’s functionality defense.
Louboutin then launched an appeal against the decision on Oct. 17.
YSL noted in the latest court documents that “because the functionality defense provided a complete defense to Louboutin’s motion, the District Court did not address YSL’s other grounds for denial of the preliminary injunction motion.”
YSL is vigorously defending the shoes Louboutin is alleging were infringing on its trademark, namely the Tribute, Tribtoo, Palais and Woodstock styles from the Cruise 2011 collection.
The design house claims that collection included not only red shoes, but also yellow, green, blue and purple monochrome shoes, all designed to match the ready-to-wear collection in the same season.
YSL also noted, “The red versions of these monochrome shoes were offered in four different shades of red (lobster, flame, fragola/rosa, rouge), none of which is the same shade of red (Chinese red) used by Louboutin.”
YSL goes further to imply that Louboutin will lose its appeal unless it can show, among other things, that the designer’s mark is “famous” to the general consuming public and not just “among a small segment of the population”; a likelihood of confusion and bad faith among consumers; and that it owns a valid and distinctive mark.
Ultimately, said YSL, “it is virtually inconceivable that any consumer at the point-of-sale would actually buy a YSL shoe in the mistaken belief that she is buying a Louboutin. These are expensive products, generally costing around $800 or more per pair, and, as [the designer] himself has acknowledged, consumers are sophisticated and generally exercise care before making so substantial a purchase.”