Christian Louboutin (“Louboutin”), the popular shoe company, has sued several other companies for the infringing use of their trademarked red sole which has become synonymous with the brand’s identity for over 20 years. Louboutin first registered the red sole in 2008 and has since sued such brands as Carmen Steffans, Oh…DEER!, and most recently Yves Saint Laurent (“YSL”). Louboutin claimed YSL, another brand associated with luxury, infringed their trademark with YSL’s new line of shoes, that include red-soled shoes amongst other colors.
In the complaint, Louboutin claimed YSL sought to take advantage of their brand recognition as an attempt to confuse the public and thereby impaired Louboutin in their ability to control their recognition through the dilution of their mark. The Court will apply the “likelihood of confusion” test to determine whether the consumer will be confused by the source of the shoes.
When the courts use the “likelihood of confusion” test they look at the following factors: the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the similarity of marketing channels used, the degree of caution exercised by the typical purchaser, and the defendant’s intent. In the case of YSL, the Court will have to balance these factors, as both the plaintiff and defendant are luxury brands servicing a very similar consumer.
Although trademark owners who fail to enforce their marks risk losing them as a matter of law, the question arises whether registering a color is an overreaching use of trademark law. Those who believe it is argue that registering a color provides an unfair competitive advantage. However, supporters argue that it strengthens the market by providing consumers with easily recognizable brands they can associate with the quality they desire.
Louboutin is not the first to vigorously enforce his trademark, as the color argument in association with “Trademark Dilution” is a widely debated issue. The outcome of this case could lead to other businesses using alternative means to keep their brand recognizable in the eyes of the consumer… or at least it may deter them from using red soles on their shoes.