“While ordinarily Christian Louboutin does not comment directly on pending matters, we are making an exception in this instance to correct what appears to be misleading reports of the opinion of [Maciej] Szpunar, Advocate General, which is seen to impact our trademark adversely. We disagree,” the luxury label said in a statement today.
In an analysis issued Tuesday, some of Szpunar’s statements — including a portion highlighted in bold at the top of the Court of Justice of the European Union’s official press release — appeared to lend support to the defendant’s argument in a trademark suit Louboutin filed in 2012. At that time, the designer sued Dutch company Van Haren — which operates affordable footwear outlets in The Netherlands — for selling high-heeled women’s shoes with red soles. In 2013, Van Haren was forced to cease production of the shoes in question when the Brussels Court of Appeal ruled in favor of an injunction by Louboutin, finding that the red soles represented a distinctive marker for consumers. Van Haren has continued to argue that the trademark in question is invalid — citing its connection to the shape of the shoe, an element that is not protected by EU trademark law.
Szpunar’s statements seem to lend credence to Van Haren’s argument, noting that a trademark combining color and shape — possibly in the case of Louboutin’s red-soled pumps — could be refused or declared invalid on the grounds of EU trademark law. The advocate general sent the case back to Dutch courts for consideration.
“… A close reading of the full opinion of M. Szpunar in fact supports trademark protection for our famous red sole, rather than threatening it,” Louboutin wrote in a statement today. “In his opinion, Advocate General Szpunar states that ‘The concept of a shape which ‘gives substantial value’ to the goods, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.'”
The statement continues: “Applying Mr. Szpunar’s opinion to our case support the validity of our trademark since the shape of the outsole to which the red color is applied is not intrinsically valuable. As for the Christian Louboutin’s red color, the only reason it has value is because of our marketing efforts as well as the public’s association of such color applied to a women’s heeled shoe outsole with Christian Louboutin. As such we are of the view that the opinion of M. Szpunar in fact supports the conclusion, even if it is in favor of the application of criteria for shape mark to our trademark (which we do not agree as we consider our mark to be a ‘position’ mark under EU law), that our mark is valid.”
While Louboutin has been victorious in trademark litigation in the U.S. — the designer successfully sued YSL in 2012 for trademark infringement — the brand has seen mixed rulings in other regions.
In February 2017, Swiss courts turned down a final appeal by the luxury label to trademark its red-soled heels there, finding that the red soles are merely an aesthetic element. The courts further noted that the fact that the brand has won the battle for trademark status in other markets, including China, Australia and Russia, did not mean the shoes should receive the same status in Switzerland.
In December, Louboutin was awarded almost 10 lakh rupees ($156,078) in damages and a permanent injunction against two shoe dealers — Kamal Family Footwear and Adra Steps — for infringing on his red-sole trademark in India.
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