After successfully securing an EU Trade Mark protecting its particular pantone of the colour red on the soles of high-heeled shoes, and defending its registration against several challengers, Louboutin has recently failed in its appeal regarding the Swiss IPO’s refusal to grant equivalent protection in Switzerland.
The Swiss Federal Administration Court held that the relevant consumers, namely “female fashion-conscious purchasers”, would perceive a red outsole on a shoe as a decorative element rather than a trade mark. In coming to this finding, the Court considered that there was evidence that several different producers made shoes with differently coloured soles. The judges were also clear that the fact that Louboutin’s red soles are protected in the EU, China, Russia and Australia did not set a legal precedent in Switzerland. While Swiss trademark legislation is similar to the EU First Trademarks Directive, and does permit registration of non-traditional marks such as colours, Switzerland is not a member state of the European Union and so is not covered by Louboutin’s EU Trade Mark.
Somewhat surprisingly, Louboutin dropped the argument it had made at first instance about the red soles having acquired distinctiveness, and so this issue was not addressed by the Administration Court. It is also interesting to note that the Court narrowed the definition of relevant consumers from the IPO’s original determination of “men and women of all ages” to solely female buyers – although it did not go so far as Louboutin had originally submitted in its application, where it tried to restrict the definition to only “younger women”.
This decision is the latest in a number of legal disputes over Louboutin’s red soles, which have so far led to an American decision that protected only red soles when they contrasted with the main colour of the shoe’s body, and a current Dutch reference to the European Court of Justice to ask whether “shape” in EU trade mark law refers only to three-dimensional characteristics, or also applies to properties such as colour.
As for the present case, Louboutin now has 30 days following the judgment in which it may file an appeal on a point of law only to the Federal Court of Lausanne, so it remains to be seen if it will take further steps to protect their red soles in Switzerland.