Louboutin v. YSL Forced to Agree to Disagree

The fashion law community has been carefully watching Christian Louboutin and Yves Saint Laurent battle over red-soled shoes.  CanadaFashionLaw has kept its readers in the know every step of the way.  We’re pleased to provide a summary on the much anticipated appeal decision.  (If you’ve been hiding under a rock and need to catch up to this whole dispute click here). 

At first the twitter-verse heralded this decision as a definitive win for Christian Louboutin.  However, on closer examination this appears to be more of a win-win (or a lose-lose) situation.  Ultimately, co-existence is the name of the game – a concept that is common in the trade-marks world.  

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.