Article from Bloomberg.com
Christian Louboutin SA lost a court bid to stop Yves Saint Laurent America from selling women’s shoes that Louboutin claims are identical to its trademarked red-sole footwear.
“Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection,” Marrero said in an opinion filed today.
Louboutin, a Paris-based fashion company, sued Yves Saint Laurent in April, accusing it of selling shoes “with red outsoles that are virtually identical” to Louboutin’s. Saint Laurent’s shoes “threaten to mislead the public,” according to the complaint.
“We’re obviously very disappointed,” Harley Lewin, a lawyer for Louboutin, said in a telephone interview. “We think the judge missed it.”
After a court hearing July 22 where he argued for the injunction, Lewin said, “This is the lifeblood of this company, the red sole.” Louboutin’s sales from red-sole shoes are projected at $135 million this year, Lewin said in court.
‘Sex and the City’
Louboutin introduced the red sole in 1992, and the U.S. Patent and Trademark Officeawarded the company a trademark for it in 2008, according to the complaint. The company uses the red sole on all of its luxury shoes, which have been popularized by actresses such as Sarah Jessica Parker in the television show “Sex and the City.”
‘This just reaffirms that no designer should be allowed to monopolize a primary color for fashion,’’ David Bernstein, a lawyer for Yves Saint Laurent, said about the ruling today in a telephone interview. “This is a trademark registration that never should have been issued and can’t be enforced.”
Yves Saint Laurent will ask the judge in a motion for summary judgment to dismiss the claims against the company and cancel Louboutin’s trademark registration, Bernstein said.
Marrero said in his ruling that the companies must appear in federal court in Manhattan Aug. 17, when Louboutin will have to provide arguments against a motion to cancel the mark.
Louboutin’s red-sole high-heel shoes are priced from $535 to $4,645 a pair on the website of high-fashion department store Barneys.
The designer Christian Louboutin, for whom the company is named, got the idea for red soles when he painted red nail polish on the black soles of a pair of women’s shoes, according to court papers.
Yves Saint Laurent, named for the designer who died in 2008, is a unit of Paris-based PPR (PP), the owner of other luxury brands including Gucci.
PPR fell 3.25 euros, or 2.9 percent, to 107.25 euros in Paris trading.
The case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-2381, U.S. District Court, Southern District of New York (Manhattan.)