Louboutin’s Positional Trademark: Protection denied in Switzerland

Facts and Case History

Christian Louboutin, a renowned French manufacturer of exclusive women shoes, is the owner of the following international trademark registration IR-1’031’242:

Louboutin asked that the protection of the IR trademark, with basis registration in the UK, should be extended to Switzerland.

On 15 March 2011 the Swiss Federal Institute of Intellectual Property (“IGE”) provisionally refused the trademark protection in Switzerland. It argued that the red color on the shoe sole will be understood as a purely decorative element. The positional trademark would therefore lack the necessary distinctiveness. In the following Louboutin tried to prove that the positional trademark has acquired distinctiveness by use (“Verkehrsdurchsetzung” or secondary meaning in common law jurisdictions). The IGE rejected this argument. Then the trademark owner limited the goods list (class 25) from “chaussures pour dames” to “chaussures pour dames à talons haut” and argued that the positional trademark is inherently distinctive for these products and not solely a decorative element. On 1 September 2013 the IGE definitely refused trademark protection.

On 1 November 2013 Louboutin filed an appeal against the decision of the IGE to the Swiss Federal Administrative Court. Louboutin did not anymore ask for trademark registration based on acquired distinctiveness by use, but rather on inherent distinctiveness. The Swiss Federal Administrative Court dismissed the appeal on 27 April 2016 (Swiss Federal Administrative Court, B-6219/2013, vom 27. April 2016). Against this decision Louboutin filed an appeal to the Swiss Federal Court.

Legal Considerations

For the decision of the Swiss Federal Administrative Court the following legal considerations were decisive:

• The nature or category of trademark is irrelevant for the assessment of distinctiveness. The distinctiveness of a positional trademark is generally assessed in the same manner as the distinctiveness of any other category of trademarks (such as word trademarks, 3-d trademarks).
• The distinctiveness of a positional trademark is assessed by a general overview of the position of the mark and the additional trademark elements. The positional element supports the distinctiveness of the entire trademark if the position of the mark is, with respect to the specific products for which the trademark should be protected, unexpected or remarkable or if the position has acquired distinctiveness by use.
• The bottom of a shoe sole is generally not a position on which the display of a trademark is unexpected or remarkable. From an aesthetic point of view this position is usually the only place where a trademark can be placed on women shoes with high heels. Evidence provided by the IGE further demonstrated that several shoe retailers on the Swiss market offer colored bottom sides of shoe soles.
• The color red is a basic color and is often used in the fashion industry as a decorative element. Evidence provided by the IGE demonstrated that several shoe retailers on the Swiss market offer colored bottom sides of shoe soles. As a consequence, colored, and therefore also red colored, bottom sides of the shoe sole for women shoes do not deviate from the common design basket.
• The relevant public is in the case at hand not restricted to rather rich women, but rather to any women – from very young to older ages – with an increased fashion awareness. The relevant public will consider colored – here red colored – bottom sides of shoe soles primarily as decorative element and not as a trademark. The positional trademark is therefore not inherently distinctive.

The Swiss Federal Court supported these findings with the following legal considerations:

• Relevant for the protection of a positional trademark are not only the position of the trademark or the other trademark elements, but rather the combination of the position and other trademark elements. It is therefore important that both, the additional trademark elements and the position of the trademark are distinctive. The position may only support the overall distinctiveness if it presents in the assessment of the relevant public a sufficiently characteristic element of the product. It must, in other words, be strong enough to place the entire positional trademark into a different context. This context must be so different from the common position of trademarks with respect to the specific product that it cannot be understood by the relevant public in any other way than as a distinctive sign that refers to the origin of the product.
• The red color is not inherently distinctive for women shoes. The contour of a women shoe is also not inherently distinctive for women shoes. Shapes or contours that constitute the nature of the goods themselves are generally descriptive (see art. 2 lit. b of the Swiss Trademark Act).
• As a consequence, the positional trademark does not consist of a characteristic form or a remarkable design, but is rather restricted to a red color for a functionally indispensable and in terms of space significant part of the relevant products, i.e. women shoes with high heels.
• The fact that the red color is uncommon compared to other women shoes with black, brown or beige colored shoe soles does not result in an inherent distinctiveness of the trademark in an overall assessment. It is undisputed that red colors are often used in the fashion industry as decorative element. In addition, the evidence provided by the Swiss Federal Administrative Court demonstrated that there are women shoes with high heels and green, yellow, blue, purple or pink shoe soles. The colored shoe sole will therefore rather be understood as aesthetic element of the shoe and not as a trademark.

Comment

The Swiss decision demonstrates that an international trademark registration does not render the national trademark laws and practices redundant. Even though the positional trademark of Christian Louboutin was accepted by the trademark offices in other countries as sufficiently distinctive, the Swiss courts came to another conclusion. The Swiss Federal Court explicitly mentioned that Swiss courts are not bound by trademark decisions of foreign courts or authorities. Each country assesses the trademark protection of an international trademark registration based on its own statutes and case law.

It is important to mention that both, the Swiss Federal Administrative Court and the Swiss Federal Court, did not assess on whether the positional trademark acquired distinctiveness by use. Louboutin did not anymore ask for trademark protection based on acquired distinctiveness by use in the appellation proceedings. Louboutin shoes are very renowned, in particular because of the red colored shoe soles. Louboutin shoes were featured and promoted in Hollywood movies and TV series. However, Swiss law sets a rather high standard with respect to proving the acquisition of distinctiveness by use.

It should be mentioned with that respect that US courts already had to assess the trademark protection of a Louboutin trademark. The Court of Appeals of the Second Circuit came in its decision of 5 September 2012 to the conclusion that the red color of the Louboutin shoes is not inherently distinctive (United States Court of Appeals, Second Circuit, docket number 11-3303-cv, 5 September 2012). It, however, decided that the sign acquired distinctiveness by use (in US trademark law terms “secondary meaning”) in situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe. It ordered the US Patent and Trademark Office to limit the trademark protection to such situations.

Currently, a case between Christian Louboutin and the shoe retailer Deichmann is pending with the European Court of Justice (Case Nr. C-163/16). A Dutch court asked the European Court of Justice to assess on whether the Louboutin red color trademark can be protected under EU trademark laws.

Further information:

• Decision of 7 February 2017, 4A_363/2017
• Swiss Federal Administrative Court, B-6219/2013, vom 27. April 2016
• United States Court of Appeals, Second Circuit, docket number 11-3303-cv, 5 September 2012
• thefashionlaw.com, 6 October 2016: Cases of Interest – Christian Louboutin vs. Yves Saint Laurent
• Case Nr. C-163/16
• BR-News of 25 March 2013 (in German): BVGer: Streifenmuster auf Sportschuhen von K-Swiss kann als Positionsmarke eingetragen werden